Procedural elements

confirmed by the UDRP

practice
Conf. Univ. Dr. Beatrice Onica
Jarka
1. What deference is owed to past UDRP decisions dealing with similar
factual matters or legal issues?

Consensus view: The UDRP does not operate on a strict doctrine of precedent.
However, panels consider it desirable that their decisions are consistent with prior
panel decisions dealing with similar fact situations. This ensures that the UDRP
system operates in a fair, effective and predictable manner for all parties, while
responding to the continuing evolution of the domain name system. Panels have
noted in this context that the UDRP system preserves court options for parties.

Relevant decisions:
Geobra Brandstätter GmbH & Co KG v. Only Kids Inc, WIPO Case No. D2001-0841,
<playmobil.net> inter alia, Transfer
PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338,
<paa.com>, Denial
Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-
0014, <hjta.com>, Denial
Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-
0061,
<800-flowers.com>, Transfer
F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629,
<xenicalla.com>, Transfer
Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, <lionsden.com>, Denial
2. Will the WIPO Center put an unsolicited supplemental filing before a
panel, and in what circumstances would a panel accept such filing?

Consensus view:
As the UDRP Rules grant the panel sole discretion to request further statements
and determine the admissibility of evidence which may include an unsolicited
filing, such filings, when received from a party, would typically be put before the
panel upon the panel's appointment - at no additional charge - for determination
as to admissibility, and assessment of need for further procedural steps (if any).
Normally in such cases, a panel would include a ruling on admissibility of any such
received filings in its decision, or in the event that an opportunity to reply is
offered to the other party, in an administrative panel order. 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.
Relevant decisions:

Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,

WIPO Case No. D2001-1447, <delikomat.com>, Transfer
AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058,
<autoway.com>, Denial
De Dietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No.
D2003-0484, <de-dietrich-process-systems.com>, Transfer
Wal-Mart Stores, Inc. v. Larus H. List, WIPO Case No. D2008-0193,
<wa1mart.com>, Transfer
NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case
No. D2008-1984, <aliensport.com>, Transfer
Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO
Case No. D2010-0776, <lurpa.com>, Transfer

On when a panel should request a supplemental filing:

Auto-C, LLC v. MustNeed.com, WIPO Case No. D2004-0025,
<autochlor.com>, Transfer
Fratelli Carli S.p.A. v. Linda Norcross, WIPO Case No. D2006-0988,
<carli.org>, Denial
3. Under what circumstances can a refiled case be accepted?

Consensus view: A refiled case concerns the complainant submitting a second

complaint involving the same domain name(s) and the same respondent(s) as in
an earlier complaint that had been denied. A refiled case may only be accepted in
limited circumstances. These circumstances include when the complainant
establishes in the complaint that relevant new actions have occurred since the
original decision, or that a breach of natural justice or of due process has
occurred, or that there was other serious misconduct in the original case (such as
perjured evidence). A refiled complaint would usually also be accepted if it
includes newly presented evidence that was reasonably unavailable to the
complainant during the original case.
In certain, highly limited circumstances (such as where a panel found the
evidence in a case to be finely balanced, and that it was possible that the future
behavior of the respondent might confirm bad faith registration and use after all), a
panel in a previous case may have found it appropriate to record in its decision
that, if certain conditions were met, a future refiled complaint may be accepted.
Where this has occurred, the extent to which any such previously-stipulated
panel conditions may have been met in any refiled complaint may also be a
relevant consideration in determining whether such refiled complaint
should be accepted.
A re-filing complainant must clearly indicate the grounds allegedly justifying the
refiling of the complaint. The provider with which such refiled complaint has
been filed has responsibility for determining if, prima facie, the refiling
complainant has indeed pleaded grounds which might justify entertaining the
refiled complaint. An affirmative determination is a precondition for provider
acceptance of the refiled complaint, and for panel determination of the refiling
request and any decision on the merits. A re-filing complainant's failure to
clearly identify that its complaint is a re-filing of an earlier UDRP complaint may
constitute a material omission for the purpose of any panel assessment of
reverse domain name hijacking.
Relevant decisions:

Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490, <creo-
scitex.com>, Transfer
Maruti Udyog Ltd. v. maruti.com, WIPO Case No. D2003-0073, <maruti.com>, Transfer
AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527, <svenskaspel.com>,
Transfer
Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082,
<realspanking.com>, Transfer
Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc.,
WIPO Case No. D2007-1856, <shawrugsonline.com>, Transfer
GetMore A/S v. Sooyong Kim, WIPO Case No. D2009-0357, <getmore.com>, Denial
Cheung Kong (Holdings) Limited and Chueng Kong Property Development Limited v.
Netego DotCom, WIPO Case No. D2009-0540, <長江.com>, Denial
Giochi Preziosi S.P.A. v. VGMD NetWeb S.L., WIPO Case No. D2009-0542,
<gormiti.mobi>, Denial
Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No.
D2011-0057, <yellowpage-adelaide.com> inter alia, Transfer
4. May a panel perform independent research when reaching a
decision?

Consensus view:
A panel may undertake limited factual research into matters of public record if it
deems this necessary to reach the right decision. This may include visiting the
website linked to the disputed domain name in order to obtain more information
about the respondent and the use of the domain name, consulting a repository
such as the Internet Archive (at www.archive.org) in order to obtain an indication
of how a domain name may have been used in the relevant past, reviewing
dictionaries or encyclopedias to determine any common meaning, or discretionary
referencing of trademark online databases. A panel may also rely on personal
knowledge. 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. Alternatively or additionally, if the panel feels
that it requires supplemental information to make a decision in a proceeding, it
can issue a procedural order to the parties requesting the submission of such
information.
Relevant decisions:

Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No.
D2002-0070, <nestlefoods.com>, Transfer
Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-
1038, <hescobastion.com>, Transfer
Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-
0014, <hjta.com>, Denial
National Football League v. Thomas Trainer, WIPO Case No. D2006-1440,
<nflnetwork.com>, Transfer
La Francaise des Jeux v. Domain Drop S.A., WIPO Case No. D2007-1157,
<coteetmatch.com>, Transfer
Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises
Limited., WIPO Case No. D2008-1768, <arena.com>, Denial
Latchways PLC v. Martin Peoples, WIPO Case No. D2010-1255,
<mansafe.com>, Transfer
Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V.,
WIPO Case No. D2011-0057, <yellowpage-adelaide.com> inter alia, Transfer
5. Does failure of a respondent to respond to the complaint (respondent
default) automatically result in the complainant being granted the
requested remedy?

Consensus view:
A respondent's default does not automatically result in a decision in favor of the
complainant. Subject to the principles described in paragraph 2.1 above with regard
to the second UDRP element, the complainant must establish each of the three
elements required by paragraph 4(a) of the UDRP. Although a panel may draw
appropriate inferences from a respondent's default (e.g., to regard factual
allegations which are not inherently implausible as being true), paragraph 4 of the
UDRP requires the complainant to support its assertions with actual evidence in
order to succeed in a UDRP proceeding. There are many examples of cases
(typically involving complaints based on wholly unsupported assertions or mere
conclusory statements) to which there has been no response where (not
withstanding such respondent default) the decision has nonetheless gone in favor of
the respondent on grounds that the complainant has failed to prove its case.
Relevant decisions:

The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-
1064, <vanguar.com>, Transfer
Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No.
D2003-0465, <berlitzsucks.com>, Transfer
Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case
No. D2004-0383, <brookehogan.com>, Denial
Allianz, Compaña de Seguros y Reaseguros S.A. v. John Michael,
WIPO Case No. D2009-0942, <Allianz-es.com>, Transfer
Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE
LIMITED, WIPO Case No. D2008-1036, <mancinissleepworld.com>,
Denial
M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No.
D2010-0941, <virtualexpo.com>, Denial
Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO
Case No. D2010-1413, <intopicmedia.org>, Denial
6. What is the standard of proof under the UDRP?

Consensus View: The general standard of proof under the UDRP is "on balance" -
often expressed as the "balance of probabilities" or "preponderance of the evidence"
standard. Under this standard, an asserting party would typically need to establish that
it is more likely than not that the claimed fact is true. Conclusory statements
unsupported by evidence which merely repeat or paraphrase the criteria or scenarios
under paragraphs 4(a), (b), or (c) of the UDRP would typically be insufficient.

Relevant decisions:

Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No.
D2000-0847, <madonna.com>, Transfer
Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-
1772, <tribecafilmcenter.com>, Denial
Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No.
D2003-0185, <bootiebar.com>, Denial
William S. Russell v. Mr. John Paul Batrice d/b/a the Clock Doc, WIPO Case No.
D2004-0906, <clockdoc.com>, Denial
Check Into Cash, Inc. v. Peter Wolfe, Microtel Ltd., WIPO Case No. D2008-0745,
<checkintocash.info>, Transfer
Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434,
<unlimitedwiidownloads.com>, Transfer
Comservice SA v. Mdnh Inc., Brendhan Height, WIPO Case No. D2010-1591,
<comservice.com>, Denial
7. Under what circumstances may further domain names be added
to a filed complaint?
Consensus view: Provided the complainant has relevant trademark rights [see
also paragraph 1.8 above], and all relevant domain names are registered by the
same domain name holder [see also paragraphs 4.15 below], additional domain
names may in certain circumstances be added to a complaint after filing but
prior to formal commencement of UDRP proceeding. For example, if it should
come to light after the filing of a complaint that there are additional domain
names registered by the same domain name holder which are alleged to be
identical or confusingly similar to the invoked trademark, this may constitute
grounds for their addition to the complaint where fair and practicable. One
possible way in which this may come to light is where a complaint is filed against
a privacy or proxy registration service, an underlying registrant is disclosed,
such entity turns out to also be the registrant of other domain names alleged by
the complainant to contravene its trademark rights for purposes of the UDRP,
but not yet subject to a UDRP complaint [see further paragraph 4.9 below]. In
such circumstances a reasoned request from the complainant to add additional
domain names to the filed complaint may be submitted to the WIPO Center.
Subject to provider acceptance, and without prejudice to panel discretion,
submission of any appropriate amendments to the complaint, and payment of
any fees that may apply, upon completion of the administrative compliance
review of the amended complaint, such complaint may be notified to the
respondent and the proceeding formally commenced on that basis.
However:
Any request for addition of domain names to a complaint only after it
has been notified to the respondent and the proceeding has been
formally commenced on that basis would normally need to be
addressed by the panel (on appointment). Panels have in some cases
been reluctant to grant such requests, where received only after
appointment. Where panels grant such requests, they would typically
order a partial recommencement of the procedure to allow a proper
response opportunity in relation to the added domain names.

Relevant decisions:

Société Air France v. Spiral Matrix, WIPO Case No. D2005-1337,

<airfrancereservation.com> inter alia, Transfer
Department of Management Services, State of Florida v. Digi Real
Estate Foundation, WIPO Case No. D2007-0547, <myflorrida.com>,
Transfer
Société Air France v. Kristin Hirsch, Hirsch Company, WIPO Case No.
D2008-1213, <airfrancesite.info>, Transfer
8. Who is the proper respondent in a case involving a privacy or proxy
registration service?
In general, whoever a panel may ultimately determine to be the proper respondent
in a domain name case involving a privacy or proxy registration service, there is
wide recognition among panels that a complainant or provider who has correctly
sent a UDRP case-communication to the WhoIs-listed registrant of record for a
disputed domain name will (at least in the absence of better information) normally
have discharged its communication responsibility under the UDRP Rules.

Although reference has been made by some panels to paragraph 3.7.7.3 of the
ICANN Registrar Accreditation Agreement, the UDRP and UDRP Rules do not
contemplate the use of privacy or proxy registration services per se, nor provide
express guidance on the issue. The UDRP Rules define the respondent as the holder
of a domain name registration against which a complaint is initiated. The UDRP
Rules also give the panel power to conduct proceedings in such manner as it
considers appropriate in accordance with such Rules and the UDRP
Accordingly, in a WIPO UDRP case in which a privacy or proxy registration
service is named as the respondent in a filed complaint (e.g., because the
complainant was not aware of the identity of any underlying registrant) -
and the concerned registrar (or the privacy or proxy service provider) in
response to a request from the WIPO Center discloses an underlying
registrant of the domain name that differs from the privacy or proxy
registration service which appeared in the WhoIs at the time the complaint
was filed, on which the complainant may act as described in (c) below -
ultimately the panel has discretion to determine the identity of the proper
respondent.

Most panels in cases involving privacy or proxy services in which

such disclosure of an underlying registrant has occurred, appear to have
found it appropriate to record in their issued decision both the name of the
privacy or proxy registration service appearing in the WhoIs at the time
the complaint was filed, and of any disclosed underlying registrant. Some
panels, usually in cases where there has been a clear and timely
disclosure, have elected to disregard the privacy or proxy service entirely
and focus solely on the registrar-confirmed registrant.

WIPO panels have recognized on the issue more generally, pending any
uniform instructions from ICANN on the issue, that where a disclosure of
an "underlying registrant" occurs, the following is appropriate:
(a) the WIPO Center makes the (typically registrar-disclosed) "underlying
registrant" information available to the complainant, and provides the complainant
with an opportunity to amend the complaint to reflect that information should the
complainant so choose;

(b) should a complainant choose not to amend its complaint in such

circumstances, this would not normally amount to a complaint deficiency for the
purpose of the WIPO Center completing its administrative responsibilities under
the UDRP Rules;
(Complainants do tend to amend to reflect any disclosed registrant information,
partly to avoid possible enforcement questions in the event of any subsequent
transfer or cancellation order.)

(c) in practical terms, a complainant may choose to either add a disclosed

underlying registrant as a co-respondent to the complaint, or replace the
originally named privacy or proxy service with the disclosed "underlying
registrant", or (as rarely happens) retain the privacy or proxy service as the sole
named respondent; also, in any case, the complainant may choose to amend or
supplement its substantive pleadings in light of any such disclosure;

(d) in light of the definition of mutual jurisdiction in the UDRP Rules, a

complainant may rely for such purposes on the location of the registered domain
name holder as it appeared in the WhoIs when the complaint was filed with the
WIPO Center (even if that may be the location of the initially-listed proxy or
privacy service);
(e) once the WIPO Center has notified the complaint to the WhoIs-listed contact
information (especially where confirmed by the registrar) for the domain name
registrant, this would normally satisfy the requirement in paragraph 2(a) of the
UDRP Rules to employ reasonably available means calculated to achieve actual
notice. (Panels have also noted that: (i) there are limits to what can reasonably be
done by parties and providers to identify an "underlying registrant" in the context
of the UDRP, and if WhoIs information is not readily usable for communication
purposes in such case the registrant must expect to bear any consequences; and
(ii) in cases of ambiguity as to the identity of the proper respondent, what matters
in terms of notification obligations under the UDRP Rules is not so much the name
that may "formally" appear on the complaint, but that the latter has been duly
notified to the reasonably available contact information of the "registrant",
whatever its identity);

(f) preserving panel discretion to determine the identity of the proper respondent
in any case in which there may be ambiguity, for abundance of caution, in its
current practice (subject to further evolution of privacy issues), the WIPO Center
would normally notify the case and forward a copy of the complaint on notification
to any disclosed underlying registrant, as well as to the originally-named privacy
or proxy service.
However: Panels have also found, especially where a "disclosed" registrant in
turn appears to be yet another privacy or proxy service, or in similar "Russian
doll" scenarios, that the coming to light of such registrant may in certain
conditions support a finding of breach of paragraph 8(a) of the UDRP, which
cyberflight scenario may have implications for determination of respondent
identity as well as for substantive findings.

Relevant decisions:

TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and

Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620,
<tdstelecom.net>, Transfer
HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO
Case No. D2007-0062, <creditkeeper.com>, Transfer
CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private
Limited / SA c/o FP, WIPO Case No. D2008-0687, <theedmontonjournal.com>,
Transfer
Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No.
D2009-0571, <jaylenoshow.com>, Transfer
9. Does delay in bringing a complaint prevent a complainant from
filing under the UDRP?

Panels have recognized that the doctrine or defense of laches as such does not
generally apply under the UDRP, and that delay (by reference to the time of
the relevant registration of the disputed domain name) in bringing a complaint
does not of itself prevent a complainant from filing under the UDRP, or from
being able to succeed under the UDRP, where a complainant can establish a
case on the merits under the requisite three elements. Panels have noted that
the remedies under the UDRP are injunctive rather than compensatory in
nature, and that a principal concern is to avoid ongoing or future confusion as
to the source of communications, goods, or services.

However: Panels have also noted that a delay in bringing a complaint under
the UDRP may make it more difficult for a complainant to establish its case on
the merits, particularly in relation to the second and third elements requiring
the complainant to establish that the respondent lacks rights and legitimate
interests and that the respondent registered and used the domain name in
bad faith. A small number of panels have also begun to acknowledge the
possible applicability, in appropriate and limited circumstances, of a defense of
laches under the UDRP where the facts so warrant.
There are two reasonings for not acknowledging Laches as a defense:

1)A policy procedure remedy is focused n cessation and aims at preventing future
confusion with regards to the source of goods.
Pharmaceutical Product Development, Inc., Pharmaco Investments,
Inc. v. Damian Macafee (a.k.a James M. Van Johns),
QTK Internet/Name Proxy/Private Registration, WIPO Case
No. D2011-0637 <ppd.com>: “
“However desirable a limitation period may be – as other dispute resolution
systems such as the Nominet Policy in force in the United Kingdom and New
Zealand have recognised – under the Policy, laches can, in this Panel’s view, not be
a defence. In this Panel’s view, laches is a purely equitable defence which can
only be invoked in courts exercising an equitable jurisdiction. It can have no place
in a system where the rules are set by the Policy which operates an administrative
procedure.”
2) Laches is not expressly provided as a defense as per the Policy.
HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658
<taxcutinc.com> (“The fundamental difficulty for a respondent claiming laches or the like is that
there is nothing either in the Policy or the Rules that suggests that such a doctrine should
apply”)
The E.W. Scripps Company v. Sinologic Industries, WIPO CaseNo. D2003-0447
<commercialappeal.com>
Relevant decisions:

The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-
0616, <alberteinstein.com>, Denial
Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No.
D2006-0560, <tomcruise.com>, Transfer
Tax Analysts v. eCorp, WIPO Case No. D2007-0040, <taxanalyst.com>, Denial
Francine Drescher v. Stephen Gregory, WIPO Case No. D2008-1825,
<frandrescher.com>, Transfer
The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer
Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057, <jenniferlopez.net> inter
alia, Transfer
10. Can a registrar be liable as a registrant under the UDRP?

A registrar may be liable as a registrant under the UDRP where it has acted as
such in the registration of a domain name. Likewise, a registration undertaken
by a registrar through an associated legal entity is not for that reason shielded
from the UDRP. When acting solely in its capacity as a registrar, and not as a
registrant, a registrar is not subject to jurisdiction under the UDRP as a
respondent.

Relevant decisions:

General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834,
<gegeneralelectric.com> inter alia, Transfer
Pernod Ricard v. Tucows.com Co, WIPO Case No. D2008-0789, <ricard.com>,
Transfer
11. Can UDRP proceedings be suspended for purposes of settlement?

WIPO panels have recognized that UDRP proceedings may be suspended by the
WIPO Center at the request of the parties to enable settlement of their dispute prior
to panel appointment. Where a signed suspension request for such purpose
identifying the period of time sought (typically not more than 30 days) is submitted to
the WIPO Center by the complainant (and not objected to by the copied respondent)
or by both parties, a notification would normally be issued to the parties and
registrar advising the period of the suspension, and that the domain name should be
unlocked only for the purpose of any transfer of the domain name from the registrant
to the complainant under the terms of any agreed settlement between the parties. In
the latter scenario, in order to encourage settlement where appropriate, WIPO will
fully refund the fee advanced for the not-yet-appointed panel. A request for
suspension would not normally be granted where either party objects. Given the
expedited nature of UDRP proceedings, the WIPO Center will normally grant a
request to extend the initial suspension by one further period of up to 30 days. A
request from the parties to suspend proceedings to explore possible settlement
options only after panel appointment would be at the discretion of the panel.
Whether or not the proceedings have been suspended, where a settlement is found
to have occurred prior to the rendering of the panel's decision, the panel would
normally order the proceedings terminated in accordance with paragraph 17 of the
UDRP Rules.
Relevant decisions:

AT&T Corp. v. Ondonk Partners, WIPO Case No. D2000-1723, <attplaza.com>,

Transfer
Mori Seiki Co. Ltd. v. Texas International Property Associates, WIPO Case No.
D2007-1795, <mori-seiki.com> inter alia, Transfer
MasterCard International v. Bankrate, WIPO Case No. D2008-0704,
<mastercreditcard.com>, Transfer
F. Hoffmann-La Roche AG v. Texas International Property Associates – NA NA,
WIPO Case No. D2008-0752, <hoffman-laroche.com>, Transfer
ANOVO v. Moniker Privacy Services / Alexander Lerman, WIPO Case No.
D2008-1049, <anovo.com>, Transfer
Grundfos A/S v. Luca Mueller, WIPO Case No. D2009-0091,
<grundfosinsite.com>, Transfer
F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323, <alli-
xenical.com>, Transfer
12. Can a panel decide a case under the UDRP based on a
respondent's consent to transfer?

Where the parties to a UDRP dispute have not succeeded in settling a case between
themselves prior to the rendering of a panel decision, but the respondent has given its
unilateral and unambiguous consent on the record to the remedy sought by the
complainant, a panel may at its discretion order transfer (or cancellation) of the
domain name on that basis alone. Some panels have done so on the basis of giving
effect to party agreement as to outcome (sometimes, where the parties so request, on
a no-fault basis), with a few also by deeming such consent to satisfy the requirement
of the three elements of the UDRP (sometimes by virtue of deemed admission). Some
panels have declined to grant a remedy solely on the basis of the respondent's
consent, but rather elected to proceed to a substantive determination of the merits; for
example, because the panel needs to be certain that the complainant has shown that
it possesses relevant trademark rights, or because there is ambiguity as to the
genuineness of the respondent's consent, or because the respondent has not
expressly admitted bad faith, or because the panel finds there is a conduct or other
aspect to the proceedings which warrants a full determination on the record, or
because the panel finds that the complainant has not agreed to a consent decision
and the complainant is entitled to the decision for which it has paid in filing its
complaint, or because the panel finds a broader interest in reaching and recording a
substantive determination (e.g. in connection with patterns of conduct under
paragraph 4(b)(iii) of the UDRP).
13. What is the relationship between UDRP proceedings and court proceedings?

As paragraph 4(k) of the UDRP indicates, the UDRP does not bar either the complainant
or the respondent from seeking a judicial remedies. Paragraph 18(a) of the Rules gives
the panel discretion to suspend, terminate or continue a UDRP proceeding where the
disputed domain name is the subject of other pending legal proceedings. A panel may
determine (as happens in rare instances) that a UDRP dispute cannot be evaluated
separately from such ongoing court proceeding, and may terminate or suspend the
UDRP case on that basis, normally (in the case of termination) without prejudice to the
filing of a future UDRP complaint pending resolution or discontinuation of such court
proceeding. As to any previous court proceedings, it is in the UDRP panel's discretion to
determine what weight to ascribe thereto, in light of all circumstances. Additionally,
national courts have on occasion referred a portion of a case which concerns a domain
name for determination under the UDRP. [See further paragraph 2.4 above, as many of
the cases cited therein contain discussion of national law.]

Courts are not bound by UDRP panel determinations; where a domain name subject to a
UDRP panel decision becomes subject to a court proceeding (for example, because a
respondent elects to take the matter to court under paragraph 4(k) of the UDRP); such
court case is generally acknowledged to represent a De novo hearing of the case under
national law.
15 ÎTo what extent is national law relevant to a panel assessment of rights and
legitimate interests and/or bad faith?

Paragraph 15 (a) of the UDRP provides that a panel shall decide a complaint on the basis of
the statements and documents submitted and in accordance with the UDRP, the UDRP Rules,
and any rules and principles of law that it deems applicable. Rooted in generally-recognized
principles of trademark law, and designed to operate in the context of the world wide web, the
decision framework of the UDRP generally does not require resort to concepts or
jurisprudence specific to national law (other than with respect to the question of whether
trademark rights exist). For example, WIPO panels have recognized that bad faith under the
UDRP may be assessed by reference to the consistent body of prior UDRP decisions. Where
panels have chosen to apply national law in UDRP decisions, they have done so on grounds
including the location or nationality of the parties, or where a specific concept of national law is
judged germane to an issue in dispute, or bearing in mind, in certain circumstances, the mutual
jurisdiction election in the UDRP proceeding that would likely govern the location (and
therefore the law) of any subsequent court case. [See further paragraph 2.4 above, as many of
the cases cited therein contain discussion of national law.]
Relevant decisions:

FMR Corp. v. Native American Warrior Society, Lamar Sneed, Lamar

Sneede, WIPO Case No. D2004-0978,
<fidelitybrokerageinvestmentsfraud.com> inter alia, Transfer, Denial in Part
Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994,
<fashiontv.com>, Denial
1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-
1461, <1066ha.com>, Transfer
Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-
1947, <calvinayrefoundation.org>, Transfer
Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647,
<sermosucks.com>, Denial
St Andrews Links Ltd v. Refresh Design, WIPO Case No. D2009-0601,
<theoldcourse.com>, Transfer
16. Can multiple complainants bring a single consolidated complaint against a
respondent? Can a single consolidated complaint be brought against multiple
respondents?

WIPO panels have articulated principles governing the question of whether a complaint filed
with WIPO by multiple complainants may be brought against (one or more) respondents.
These criteria encompass situations in which (i) the complainants either have a specific
common grievance against the respondent, or the respondent has engaged in common
conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would
be equitable and procedurally efficient to permit the consolidation; or in the case of
complaints brought (whether or not filed by multiple complainants) against more than one
respondent, where (i) the domain names or the websites to which they resolve are subject
to common control, and (ii) the consolidation would be fair and equitable to all parties.

In order for the filing of a single complaint brought by multiple complainants or against
multiple respondents which meets the above criteria to be accepted, such complaint would
typically need to be accompanied by a request for consolidation which establishes that the
relevant criteria have been met. The onus of establishing this falls on the filing party/parties,
and where the relevant criteria have not been met, the complaint in its filed form would not
be accepted.
Relevant decisions:

NFL Properties, Inc. inter alia v. Rusty Rahe, WIPO Case No. D2000-0128,
<arizonacardinals.com> inter alia, Transfer
Fulham Football Club (1987) Limited, et.al v. Domains by Proxy, Inc./ Official
Tickets Ltd, WIPO Case No. D2009-0331, <official-fulham-tickets.com> inter alia,
Transfer
MLB Advanced Media, The Phillies, Padres LP v. OreNet Inc., WIPO Case No.
D2009-0985, <padresbaseball.com> inter alia, Transfer
Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof,
WIPO Case No. D2009-1661, <amstel-intercontinental.com> inter alia, Transfer,
Denial in Part
Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew
Simmons, WIPO Case No. D2010-0281, <aussiespeedoguy.com> inter alia,
Transfer
17. In what circumstances should a finding of Reverse Domain Name Hijacking or
abuse of process be made?

Paragraph 15(e) of the UDRP Rules provides that, if "after considering the submissions the
panel finds that the complaint was brought in bad faith, for example in an attempt at
Reverse Domain Name Hijacking or was brought primarily to harass the domain-name
holder, the panel shall declare in its decision that the complaint was brought in bad faith
and constitutes an abuse of the administrative proceeding". Reverse Domain Name
Hijacking is defined under the UDRP Rules as "using the UDRP in bad faith to attempt to
deprive a registered domain-name holder of a domain name".

WIPO panels have found that the onus of proving complainant bad faith in such cases is
generally on the respondent, whereby mere lack of success of the complaint is not itself
sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain
Name Hijacking, a respondent would typically need to show knowledge on the part of the
complainant of the complainant's lack of relevant trademark rights, or of the respondent's
rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name.
Evidence of harassment or similar conduct by the complainant in the face of such
knowledge (e.g. in previously brought proceedings found by competent authorities to be
groundless, or through repeated cease and desist communications) may also constitute a
basis for a finding of abuse of process against a complainant filing under the UDRP in
such circumstances.
WIPO panels have found Reverse Domain Name Hijacking in circumstances
including where: the complainant in fact knew or clearly should have known
at the time that it filed the complaint that it could not prove one of the
essential elements required by the UDRP; the complainant failed to notify the
panel that the complaint was a refiling of an earlier decided complaint [see
further discussion regarding refiled complaints in paragraph 4.4 above] or
otherwise misled the panel; a respondent's use of a domain name could not,
under any fair interpretation of the reasonably available facts, have
constituted bad faith; the complainant knew that the respondent used the
disputed domain name as part of a bona fide business for which the
respondent obtained a domain name prior to the complainant having relevant
trademark rights [see further paragraph 3.1 above with respect to bad faith
and complainant trademark rights which post-date domain name
registration].
The fact of default by a respondent does not necessarily prevent a finding of
Reverse Domain Name Hijacking in appropriate cases, and WIPO panels have
on occasion entered such findings on their own initiative, especially where the
complainant has intentionally attempted to mislead the panel by omitting
material evidence.

WIPO panels have declined to find Reverse Domain Name Hijacking in

circumstances including where: the complainant has succeeded in establishing
each of the three essential elements required under the UDRP; the
complainant's argument under a required element of the UDRP fails, but not by
such an obvious margin that the complainant must have appreciated that this
would be the case at the time of filing the complaint; there is a question of
clean hands or factual accuracy on the part of both parties; the respondent's
website contains commercial links explicitly referable to the complainant for the
purpose of generating revenue, providing a basis for the complainant to be
aggrieved; or there appears to be another relevant factual basis for filing the
complaint.
Relevant decisions:

carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047,

<carsales.com>, Denial (RDNH found)
Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081, <nativestyles.net> inter
alia, Denial (RDNH denied)
Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344,
<downunder.travel>, Denial (RDNH found)
Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-
0905, <proto.com>, Denial (RDNH found)
Mondial Assistance S.A.S. v. Compana LLC, WIPO Case No. D2007-0965,
<mondial.com>, Denial (RDNH denied)
Grasso's Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso
Holding N.V. v. Tucows.com Co, WIPO Case No. D2009-0115, <grasso.com>,
Denial (RDNH denied)
Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462,
<compart.com>, Denial (RDNH denied)
Cheung Kong (Holdings) Limited and Chueng Kong Property Development Limited
v. Netego DotCom, WIPO Case No. D2009-0540, <長江.com>, Denial (RDNH
found)
Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279,
<wifiparis.com>, Denial (RDNH denied)
M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941,
<virtualexpo.com>, Denial (RDNH found)]
Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, <lionsden.com>, Denial
(RDNH found)