0.9: Appropriate Use of Procedural Orders

0.9 Appropriate Use of Procedural Orders

Procedural Orders are permitted under Rule 12’s general power granting the Panel the right to request further statements or documents from the parties. Nevertheless, Procedural Orders must be used cautiously and sparingly. Procedural Orders should not be used to enable a party to improve upon its case because it is up to the party to make its case and not to the Panel to do so on a party’s behalf. Where a Panel recognizes that a party’s case is wanting, for example insufficient evidence is presented or a party fails to allege requisite elements of the three-part UDRP test, a Panel should generally avoid attempting to rectification via issuing a Procedural Order and instead, dismiss.

If however, justice demands that a party be alerted to a simple and inadvertent oversight a Procedural Order may be appropriate but more often it is likely that dismissal without prejudice is the more appropriate solution. Whenever a Procedural Order is issued and it results in further argument or evidence, Rule 10(b)’s requirement that the parties be treated equally and that each be given a fair opportunity to present its case, generally means that the other party be given an opportunity to respond to the further argument or evidence.

Additional Information

Relevant Decisions

Closet World, Inc v. Abdul Gafoor M K / cw india / Khaled Shorbaji, Forum FA2502002139255 <closetworldme.com> and <closetworld-qatar. com>, Denied

This Panel has considered whether to exercise the power to request further statements relating to the asserted goodwill of Complainant which is not supported by evidence.

However, in the circumstances of this case it has been decided not to issue a Procedural Order for two reasons: firstly, issuing such an order could be construed as directing proofs on one Party and contrary to the Panel’s obligations of impartially and Rule 10(b), secondly issuing a Procedural Order would necessitate further rounds of submissions in the interests of fair procedure and would be inappropriate given the Panel’s obligation to proceed with expedition pursuant to Rule 10(c).

Haemonetics Corporation v. Brent Bristow, WIPO D2024-2838, <harmonetics.com>, Denied

In this case, there is plausible evidence that Respondent acted in good faith when he registered the Disputed Domain Name. This evidence must be weighed in the balance. In the Panel’s view, this countervailing evidence weighs more than the inferences to be drawn from the PPC links.

Sonata Software Limited v. Narendra Ghimire, Deep Vision Architects, WIPO No. DAI2023-0051, <sonata.ai>, 3-member, Denied

On January 25, 2024, the Complainant submitted a Supplemental Filing to the Center. On January 25, 2024, the Respondent submitted an objection to the Complainant’s Supplemental Filing and requested a chance to file a Supplemental Filing, if the Complainant’s is to be considered by the Panel. The Panel issued Procedural Order No. 1 on February 21, 2024, admitting the Supplemental Filing in part, and giving the Respondent an opportunity to respond to the admitted parts of the Supplemental Filing.

Novartis AG v. Giselle Perez (Epsilon Comunicacion SL), CAC-UDRP-105977 (2023), <novartisx.com>, <xnovartis.com>, Transfer

The Panel issued Procedural Order No.1 in respect of the language of the proceeding… Instructed the Complainant to submit a translation of the Complaint into Spanish not later than on 16 January 2024; Invited the Respondent to submit a Response in either Spanish or English within 7 days of the submission by the Complainant of the Complaint translated into Spanish…

Automobili Lamborghini S.p.A. v. Domain Administrator, See PrivacyGuardian.org / Richard Blair, WIPO No. D2022-1570, <lambo.com>, 3-member, Transfer over a dissent

Majority opinion:

Having regard to the fact that paragraph 12 of the UDRP Rules enables a panel, in its sole discretion, to request any further statements or documents from the parties that it deems necessary, the Panel considered whether it was appropriate to issue a procedural order inviting the Respondent to file further evidence in support of his claim. A procedural order might be made, for example, in circumstances where a party makes a prima facie credible assertion the confirmation of which would benefit from additional supporting evidence; see section 4.7 of the WIPO Overview 3.0. However, in these proceedings, the Respondent has explained that he is a professional domainer and his Response has shown familiarity with the terms of the Policy and its application and therefore, there are no persuasive reasons for granting him the considerable leeway of, in effect, having another bite at the cherry. This is particularly the case as the shortcomings in the Response on this issue do not amount to a minor lacuna in otherwise satisfactory evidence which, for clarity, the Panel wishes to have filled, but are appreciably more extensive. In these circumstances, the majority of the Panel has concluded that it would be inappropriate to invite the Respondent to file additional evidence and that the Respondent has not established that he is commonly known by the disputed domain name.

Dissent:

It seemed therefore to this panelist that in the state of the evidence as it was, it was appropriate to issue a procedural order to enable the Panel to test the assertions of the Respondent and elicit in the Panel’s own way and under its own supervision, whatever evidence there was to show, one way or the other, whether the Respondent was commonly known as Lambo.

It also seemed to this panelist that to give equal opportunity to both parties it would be probative to invite the Respondent to clarify some of his evidence. If this were not done, there was a real risk that the parties would, in the case of the Respondent, not be treated equally and would not have a fair opportunity to present its case. The majority of the Panel was not able to see its way clear to agree to this proposal which is a serious barrier to finding that the Respondent has “no” rights or legitimate interest in the domain name, when clearly he had some rights and may well have more. He may have some rights that could come to light only as a result of the procedural order.

Digest Commentary

Digest Vol.5.11 <kalyanjewellers.com>, Denied

Digest Vol. 3.28 <dentless.com>, Denied

Digest Vol. 3.16 <hclsoftware.com>, Denied

Digest Vol. 3.9 <multitrack.com>, Transfer