This is true, but UDRP panels do have a power that is akin to discovery, because they may make procedural orders and by doing so they may require the production of documents.
This power is sometimes used, but not often. The power is undoubtedly there, for Rule 12 of the UDRP Rules provides that:
“In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements and documents from either of the parties.”
A recent case where the power was used is Levantuur, S.A. v. Media Insight,(WIPO case no. D2009-0608). This was a hotly defended case where the parties went at it with some enthusiasm, running parallel litigation in Florida. Not surprisingly, it emerged that the parties had had a commercial relationship of some sort in the past, but exactly what it was and when it was terminated remained doubtful.
In the UDRP proceedings, the Respondent provider of tour packages alleged that the Complainant hotel owner had been aware in 2005 of the use of the domain name by the Respondent and that it had been used in 2005 and 2006 to book rooms at the Complainant’s hotels. If accepted, this evidence would help to show that the Respondent had a right or legitimate interest in the domain name, as it would have shown that it, the Respondent, was using the domain name for a bona fide business.
Panelists need evidence to help resolve issues in dispute and when there is an assertion made which, if true, would be persuasive for one side or the other, they may test the assertion by asking for the hard evidence to back up the assertion.
That was done in the Levantur case and the Panellists requested that the Respondent provide some sample documents corroborating its statements.
In response, some documents were produced, some of which were not translated into English, but the panelist noted that they did not seem to prove the point.
It is important therefore to remember that a panelist may ask for evidence to support an assertion, that the best evidence should be provided and that it should be translated into the language of the proceedings.
The other point that has not been pursued very often, but which might have some scope, is for a party to activate the process by requesting the Panel to issue the procedural order. In other words, it may be open to a party to obtain part discovery by persuading the Panel to request the production of documents by the other party.
It may also be possible to have a form of interrogatories. In the Lavantur Case the panel on several occasions said that it had asked the Complainant questions about the business relationship between the parties and when it had been terminated .These matters were crucial to the resolution of whether the Respondent had, or had lost, a right or legitimate interest in the domain name that might have arisen because of the business relationship between the parties.
As there are usually no hearings in UDRP proceedings, the questions put by the Panelist to the parties must have been put by way of procedural order. By the means of questioning the parties, the Panelist got to the facts and they were facts that clearly influenced his decision.
Based on the totality of the material, the panel first found that the Respondent had no right or legitimate interest in the domain name at the time it registered it and that the probability was that it “registered the Domain Name in bad faith, with a view to trading off the Complainant’s reputation in its hotel resorts operated under the Complainant’s marks.”
But did the Respondent nevertheless subsequently acquire a right or legitimate interest? That may be so, for a respondent may register a domain name in bad faith and yet subsequently acquire a right or legitimate interest: Lonely Planet Publications Pty Limited v. Mike Tyler (WIPO D2004-0670).
Moreover, if such a right or legitimate interest had been acquired, was it retained?
Here the case started to swing around, for the first observation of the panel was that the Complainant had not been frank and open in its evidence.
Then it emerged that the Complainant had in fact authorised the Respondent and other travel agents to use its (the Complainant’s) logos and marks on their own websites. Indeed, the evidence amounted to showing that there had been an agreement or understanding between the Complainant and the Respondent’s interests under which the latter would promote the Complainant’s hotels, including by the use of the Respondent’s websites.
“That agreement or understanding”, the Panel concluded,” was sufficient to confer on the Respondent a right or legitimate interest in respect of the Domain Name.”
Nor was the right revoked before the filing of the Complaint: Lonely Planet.