The Truth About Supplemental Filings in UDRP Cases

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 its 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.