In one of the first UDRP decisions under the Forum’s new supplemental rules, a three-member panel issued what could be considered important advice about the submission of supplemental filings.
The advice is set forth in a footnote to a decision that contains facts and legal issues that are both interesting and amusing, including the trademark POOPY DOO, 74 domain names, a previous relationship between the parties to the case, and allegations of reverse domain name hijacking.
Given all of this, it would be easy to overlook the reference to supplemental filings in the lengthy decision. But trademark owners and domain name registrants would be wise to heed the panel’s brief note about supplemental filings (in this case, a “Sur-Reply” submitted by the Complainant):
The Panel notes that Complainant’s Sur-Reply was filed only two days prior to the due date of the Panel’s decision. While the Forum Rules seem to permit such filing, and the Panel has therefore considered the arguments set forth therein in reaching its decision, the Panel expresses concern that permitting such filings so late in the process has the potential to undercut one of the features of the UDRP process, namely, the prompt determination of the parties’ rights under the Policy.
The Forum has an interesting history with respect to supplemental filings, which are essentially documents submitted by a party in addition to the complaint and the response. While the UDRP rules do not specifically permit such filings, the Forum’s supplemental rules previously allowed for “additional written statements and documents” — but also required the submitting party to pay an additional fee of $400.
The Forum eliminated its controversial practice of charging for supplemental filings in its rules that became effective October 1, 2019 (and, at the same time, it increased the filing fee for UDRP complaints slightly). Under the Forum’s new rules, it is now “within the discretion of the Panel to accept or consider additional unsolicited submission(s).”
This change aligns the Forum’s practices with other UDRP service providers.
Given that UDRP panels decide whether to consider supplemental filings, the panel’s footnote in the POOPY DOO case is important, and it should be read as this: If you intend to submit a supplemental filing in a UDRP case, do so as quickly as possible.
Neither the UDRP rules nor any provider’s supplemental rules specify a timeline for the submission of supplemental filings, but the UDRP process is, of course, purposefully designed to resolve domain name disputes quickly — typically, a decision is published about two months after the filing of a complaint.
In most cases, the first party that would be in a position to consider submitting a supplemental filing is the complainant (or trademark owner), after the respondent (or domain name registrant) has submitted its response to the UDRP complaint. In that situation, there is a narrow window in which to do so, because the UDRP service provider will appoint a panel soon after the response has been filed — and the panel’s decision must be submitted to the UDRP provider within 14 days of its appointment.
But, as the panel’s footnote in the POOPY DOO case makes clear, supplemental filings should not be submitted “late in the process.” Indeed, while the panel in that case had time to review and consider the complainant’s supplemental filing, it is possible that a panel may draft (and even submit) its decision before receiving a supplemental filing if it is not submitted quickly.
Therefore, regardless of where a UDRP dispute is filed (at the Forum, WIPO, or elsewhere), parties that want to submit a supplemental filing would be wise to do so as quickly as possible to ensure that panels have the maximum opportunity to consider them.
