Supreme Court Rules on WIPO Procedure Costs

[Dave Zan]

Interesting link to an interesting story I got in another forum.

What are the implications of this, if any?

 

[Mr Webname]

What are the implications of this, if any?

I see $$$$$$$$ signs!

 

[jberryhill]

What are the implications of this, if any?

None. The decision that a losing UDRP respondent could be held liable for costs in a successive court action strikes me as a no-brainer.

It would have been helpful if you had mentioned that the article in question refers to an Austrian court, and not the US Supreme Court, as might be assumed by many.

 

[Mr Webname]

It would have been helpful if you had mentioned that the article in question refers to an Austrian court, and not the US Supreme Court, as might be assumed by many.

Yep - makes a big difference.

 

[Dave Zan]

None. The decision that a losing UDRP respondent could be held liable for costs in a successive court action strikes me as a no-brainer.

It would have been helpful if you had mentioned that the article in question refers to an Austrian court, and not the US Supreme Court, as might be assumed by many.

Done, sorry about that.

 

[Garry Anderson]

The Austrian Supreme Court would require a higher level of proof than UDRP.

Therefore the case should have been taken again to prove unlawfulness - before deciding if costs can be granted.

 

[jberryhill]

Proof of what?

http://www.arbiter.wipo.int/domains/decisions/html/2001/d2001-1447.html

(1) The evidence submitted by the Complainant, and confirmed by the sworn statement of the Complainant’s managing director, clearly show that the Respondent in fact provided various computer services for the Complainant from 1997 to 1999 contrary to statements made in the Response. There is therefore no doubt that the Respondent knew the Complainant’s business and the products marketed under the DELIKOMAT sign.

(2) The statement in the Response that the Respondent was acting in good faith when registering the domain is hardly believable, as the domain name in question (<delikomat.com>) is a fantasy word without any meaning in German nor in English, nor any other language.

Gee, Garry, I thought you had at least believed that trademark infringement was a legitimate cause of action. The Respondent in this case was a computer consultant who did work for a company having a fanciful, and thus inherently distinctive, name. The computer consultant then pointed the domain name at competitive goods and services. Additionally, he then claimed he'd never heard of the Complainant, when the evidence showed he had done work for the Complainant.

On those facts, if the case was brought in the US, the Respondent would be lucky to get off by paying the cost of the UDRP.

 

[Garry Anderson]

John - yes, I certainly do believe trademark infringement was a legitimate cause of action.

However - UDRP is tried in what is essentially a civil court.

Being a lawyer - I thought you knew:

You cannot have ANY case tried in civil court and have a Supreme Court decide on punishment or costs - true or false?

UDRP does not provide for punishment or costs - true or false?

If you want to go for punishment or costs - then it is a case for Supreme Court - true or false?

 

[Dave Zan]

Uh oh, John, here we go again. :emba:

 

[jberryhill]

Garry,

I am not familiar with the Austrian legal system, nor how they translate the names of their courts. The trial-level courts in the state of New York, for example, are the New York Supreme Courts.

Do you see this thread here:
http://www.dnforum.com/showthread.php?t=28431

Notice how a case from the New York Supreme Court in Manhattan was appealed to the Appellate Division? The word "supreme" does not have any particular legal meaning across systems, and certainly not across languages.

That is why in my note above, I requested correction to "an Austrian court" which, subject to my bothering to care about the Austrian legal system, is the most accurate thing I would venture to say about the position or authority of this court, if any, in that legal system.

Assuming for the moment that this was litigated in a trial level court and then kicked up on appeal over the issue of whether WIPO fees are a permissible line-item of compensatory damages then, yes, that is a perfectly acceptable question for an appellate level court to decide.

You cannot have ANY case tried in civil court and have a Supreme Court decide on punishment or costs - true or false?

Again, assuming that by "Supreme", you mean an appellate level court, your question here mixes apples and oranges. Appellate courts do not determine the "amount" of damages, but they certainly determine, as a matter of law, what kinds of things can be included in a damage calculation.

I'll give you an example. In the State of Pennsylvania, if I intentional inflict emotional distress upon you by shredding your favorite teddy bear, then you might go to court and win a trial award of $10 for the bear and $500 for emotional distress. However, if the trial record shows no evidence of a physical manifestation of that emotional distress, then I can certainly get the $500 component of that award thrown out on appeal.

Additionally, I strongly advise you go look up the meanings of these two words - remittitur and additur - both of which can be a basis for appellate review.

But, getting to the overall point, if it is possible for you to assume that anyone is ever liable for trademark infringement then, in an action subsequent to a UDRP, why shouldn't the Plaintiff be entitled to recover the cost of the WIPO proceeding? After all, along with lost profits and all of the other various measures of damages, the cost of recovering the domain name certainly counts among the cost of the infringement to the trademark owner. It's a no-brainer.

 

[Garry Anderson]

John - it is most obvious what I am saying - yet you feign ignorance.

Quote: "in an action subsequent to a UDRP, why shouldn't the Plaintiff be entitled to recover the cost of the WIPO proceeding?"

Clearly because - UDRP does not provide for punishment or costs of the Plaintiff - AND it was never the function of UDRP to do so - AND if Plaintiff wanted punishment or costs then there was another legal route (which requires greater proof).

It is they that mix "apples and oranges" - I am very certain you can see that.

If they wanted to go for punishment or costs - then it is a case for Law Courts - true or false?

It's a no-brainer ;-)

 

[jberryhill]

Clearly because - UDRP does not provide for punishment or costs of the Plaintiff - AND it was never the function of UDRP to do so - AND if Plaintiff wanted punishment or costs then there was another legal route (which requires greater proof).

Which is what the plaintiff did here. But there is absolutely no reason why a trademark owner can't use the UDRP to get the domain name, and then use a court to recover costs. You are saying that if they want to recover costs, then they have to sit around with their thumb up their hindquarters waiting for a hearing date instead of using the relatively fast UDRP to obtain the name, and then simply counting that as the cost of obtaining the domain name.

If they wanted to go for punishment or costs - then it is a case for Law Courts - true or false?

True. And that is what they did.

There is nothing at all unusual about following parallel administrative and legal routes, in order to secure different forms of relief. If, for example, you are sued for infringing a registered US trademark, you can pursue cancellation in the USPTO and in a court at the same time. Nothing in the UDRP prevents a complainant from bringing suit - the UDRP itself even says that in black and white.

 

[Garry Anderson]

John - still the pretence continues ;-)

You said before, "in an action subsequent to a UDRP, why shouldn't the Plaintiff be entitled to recover the cost of the WIPO proceeding?"

You know full well that this case sets precedent for others that have corrupt WIPO decisions to follow.

Can you really see nothing wrong with overreaching corporations going to corrupt WIPO panelists for a corrupt decision (which contrary to all other law requires no tort against them) and getting costs from Law Court?

Garry> Clearly because - UDRP does not provide for punishment or costs of the Plaintiff - AND it was never the function of UDRP to do so - AND if Plaintiff wanted punishment or costs then there was another legal route (which requires greater proof).

John> Which is what the plaintiff did here.

NO.

They went to corrupt WIPO for easy decision and went to court (which requires greater proof for exact same wrongdoing) to get costs.

Perhaps you can cite just one example when this has happened with any other case in civil courts.

John> But there is absolutely no reason why a trademark owner can't use the UDRP to get the domain name, and then use a court to recover costs.

You know full well, punishment or costs require greater proof in court of law - UDRP is not meant to be used for this.

Two totally seperate routes:

1) UDRP corrupt court - very easy to steal domain from holder - plus point is speed - tradeoff is no punishment, damages or costs.

2) Law Court - lot harder to proof - plus point is punishment, damages and costs - tradeoff is it takes longer.

There is nothing wrong (in principle) with first getting UDRP WIPO decision for domain - then proving the case in Law Court for punishment, damages and costs.

Now is there - please answer truthfully upon your honour.

Like I say - please cite just one example when something similar has happened with any other case in civil courts e.g. civil case (proven on balance of probabilities) has punishment or costs decided in criminal court (which required it proven beyond reasonable doubt).

Garry> If they wanted to go for punishment or costs - then it is a case for Law Courts - true or false?

John> True. And that is what they did.

As pointed out previously - I believe this somewhat disengenuous - Law Courts would require greater proof of wrongdoing.

John> There is nothing at all unusual about following parallel administrative and legal routes, in order to secure different forms of relief. If, for example, you are sued for infringing a registered US trademark, you can pursue cancellation in the USPTO and in a court at the same time.

If you are sued for infringement - it has not been decided in a corrupt WIPO court - true or false?

Surely I am not mistaken - you are very intelligent - do you really not grasp the principle involved here?

 

[jberryhill]

As pointed out previously - I believe this somewhat disengenuous - Law Courts would require greater proof of wrongdoing.

Your point is beyond stupid, Garry. In an action subsequent to a UDRP, the plaintiff still has to prove liability on the part of the defendant by whatever is the applicable judicial standard. The issue in the case reported here was whether the cost of the UDRP proceeding could be included in the damage assessment where liability had already been established in court.

They went to corrupt WIPO for easy decision and went to court (which requires greater proof for exact same wrongdoing) to get costs.

No Garry. They still have to show liability (and personal jurisdiction, and a bunch of other stuff) when they get to court, wholly independent of the UDRP decision. There is a mountain of legal decisions to the effect that UDRP decisions are not entitled to substantive deference in court.

There is nothing wrong (in principle) with first getting UDRP WIPO decision for domain - then proving the case in Law Court for punishment, damages and costs.

Is English your first language, Garry? I can never understand why articles like "the" and "a" seem to drop out when you get excited.

No, you, as a complainant, don't get a favorable UDRP decision, and then swing into a court and ask to pick up a check, and that's not what went on here. When you get to court, you still have to prove infringement and a bunch of other stuff. But once you have established liability, then absolutely the cost of filing the UDRP proceeding should count among the other components of damages awarded.

The fact that this mundane principle should come as a surprise to you only underscores the threat posed by your flippant and irresponsible "advice" to domain registrants who do not know better.

So, let's make this as clear as possible:

Can you really see nothing wrong with overreaching corporations going to corrupt WIPO panelists for a corrupt decision (which contrary to all other law requires no tort against them) and getting costs from Law Court?

Nobody.... Nobody is going to get a damage award of any kind from a court without first establishing liability in accordance with whatever legal standard is applicable in that court. Nobody is going to court on an action "for recovery of UDRP costs" - they are going to court on an action for trademark infringement. After they prove trademark infringement in that court, then they can recover the UDRP cost among the other components of damages awarded for trademark infringement that has been proven in that court.

Let's take a look at the UDRP:


k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.

Now, do you see the words "you or the complainanant"? Do you see the words "independent resolution"? Do you see the words "after such proceeding is concluded"?

Do these words suggest to you that, while the UDRP provides only the partial relief of domain transfer, the complainant is not barred from seeking other relief subject to the independent determination of a court after the proceeding is concluded?

If you can read, they should.

 

[Garry Anderson]

John> When you get to court, you still have to prove infringement and a bunch of other stuff. But once you have established liability, then absolutely the cost of filing the UDRP proceeding should count among the other components of damages awarded.

John> Nobody.... Nobody is going to get a damage award of any kind from a court without first establishing liability in accordance with whatever legal standard is applicable in that court.

Isn't this exactly what I was saying?

However the article did not say that - it says, "The plaintiff went on to sue the defendant in Austria for costs incurred during the WIPO procedure, claiming them as damages. The Supreme Court held that costs incurred during such a procedure are a result of the unlawful, bad-faith registration of a domain name."

John> The issue in the case reported here was whether the cost of the UDRP proceeding could be included in the damage assessment where liability had already been established in court.

As far as I can see - liability has only been established in WIPOs crooked UDRP.

Perhaps you can show me in article where it states that they have "establish[ed] liability in accordance with whatever legal standard is applicable in that court" and they "prove[d] infringement".

 

[jberryhill]

show me in article where it states [blah, blah, blah, blah]

This reminds me of your past reliance on simplified FAQ's for authoritative statements of law which take into account all situations.

Okay, I'll confess to feigned ignorance about one thing - I do know enough about Austria to know that Austrian courts require proof of liability in order to award damages. Coincidentally, my mother is from a beautiful little town on the Ybbs, not far from Vienna. (http://www.alpvandringar.se/images/waidhofen.gif)

You'll notice from the article itself that the case was kicked up from an intermediate appellate court, since it states that the Supreme Court concurred with the appellate court. Now, I don't know what kind of animal you think has been in your yard when you find horse manure, but I'm willing to believe there was a trial court down at the bottom of this set of appeals.

You'll further notice this line:

The plaintiff went on to sue the defendant in Austria for costs incurred during the WIPO procedure, claiming them as damages.

Now, I will grant you that the summary article is probably not intended to be a comprehensive introduction to intellectual property law or Austrian civil procedure, but the phrase relative to the costs - "claiming them as damages" - would suggest to even the somewhat comatose reader that the UDRP costs were claimed as damages. Of course, a claim for damages strongly suggests that someone had filed a lawsuit stating a cause of action that would entitle the plaintiff to those damages, but that could be sheer speculation on my part.

I mean, this may be a court in the Absurdtor region of Austria, wherein one files a dispute by demanding damages for, oh, no reason in particular, and where you get two appellate level courts discussing damages where no liability has been established.

 

[Garry Anderson]

Garry> Perhaps you can show me in article where it states that they have "establish[ed] liability in accordance with whatever legal standard is applicable in that court" and they "prove[d] infringement".

John> show me in article where it states [blah, blah, blah, blah]

In this quote you show of me - the [blah, blah, blah, blah] are your learned words.

Words anybody can see - that are direct interpretation of my own.

John> You'll notice from the article itself that the case was kicked up from an intermediate appellate court, since it states that the Supreme Court concurred with the appellate court.

I did not miss it.

John> I'm willing to believe there was a trial court down at the bottom of this set of appeals.

More fool you - it does not say that - just that "The plaintiff went on to sue the defendant in Austria for costs incurred during the WIPO procedure, claiming them as damages. The Supreme Court held that costs incurred during such a procedure are a result of the unlawful, bad-faith registration of a domain name."

Does it say "After proving unlawfulness in appellate court, the plaintiff went on to sue the defendant in Austria for costs incurred during the WIPO procedure, claiming them as damages."

It explicitly states, "The Supreme Court held that costs incurred during such a procedure are a result of the unlawful, bad-faith registration of a domain name."

The "claiming them as damages" relates to fact "In its reasoning the court stated that domain name dispute proceedings before the WIPO Arbitration and Mediation Centre are not arbitration proceedings within the meaning of Section 577 of the Civil Procedure Code."

In other words UDRP is not arbitration - which we knew anyway - it is example of the deception and lies.

Please tell us - why do lawyers and authorities call it arbitration?

The article states liability has only been established in WIPOs crooked UDRP - true or false?

 

[jberryhill]

Learn German, get the original decision, and get back to us. If you want to play word games with a summarized news article, feel free to do so without me. The point of the article is that the Austrian Supreme Court ruled on the issue put before them, which was whether UDRP fees can be included among damages in a trademark suit. OF COURSE there is scant information in the article about what happened at the trial level, because THEY WOULDN'T BE RULING ON DAMAGES UNLESS LIABILITY HAD BEEN ESTABLISHED AT THE TRIAL LEVEL. One assumes, since the summary was published by a law firm, that it needn't belabor that point, as they likely concluded that it wasn't going to be analyzed by anencephalic morons.

Please tell us - why do lawyers and authorities call it arbitration?

Ah, more misinformation from the absurdtor....

http://www.dnso.org/clubpublic/ga/Arc12/msg00084.html

or, more to the point:

http://www.dnforum.com/archive/index.php/t-37255

It is helpful, though, to avoid the word "arbitration" in connection with the UDRP. It is very hard to have the results of an arbitration proceeding reviewed in a US court. However, every court which has considered the issue has determined that the UDRP does not measure up to the standard of an "arbitration" within the meaning of the Federal Arbitration Act

A lawyer wrote that. THIS lawyer wrote that.

The article states liability has only been established in WIPOs crooked UDRP - true or false?

False. As you seem to have noticed, the Austrian court, just like every national court to have considered the issue, does not recognize the UDRP as a binding arbitration within the meaning of their national arbitration law. Hence, liability HAD to be established independently. The mere fact that they didn't hold it to fall within the Austrian arbitration statute necessarily means that a trial court had to independently determine unlawfulness.

Whether every sentence in the article was well-edited is a problem only to the neurotic mind.

(Minor digression for any obsessive enough to care - a fun game to play with lawyers is to switch back and forth between colloquial and legal meanings of words. "Arbitration" is one of those words. In most national legal systems, "arbitration" refers to a procedure the outcome of which will result in an award enforcible by a court and subject only to minimal review in the substance of the decision. Of course, the English word "arbitration" refers loosely to any adjudicative process. So, yes, in English, a lot of people will refer to the UDRP as an "arbitration". However, no court treats UDRP decisions with a high level of deference, and the UDRP by its own terms requires external legal proceedings to be an independent determination under the relevant national law. So in that sense it is not an "Arbitration" in the precise sense embodied in national laws granting enforcible teeth to private procedures meeting certain criteria.)

 

[aww]

On a side question, what actually *is* the current WIPO filing fee, I have seen $1000 mentioned and also $1500 at times.

Does WIPO publish a budget like ICANN showing the revenue it generates?

 

[jberryhill]

Does WIPO publish a budget like ICANN showing the revenue it generates?

It's a UN agency, like any other. If you think anyone is getting rich off of the UDRP, then dream on...

WIPO administers the Patent Cooperation Treaty. Last year alone, 114,048 international patent applications were filed under this treaty. The basic filing fee for the first thirty pages is around four hundred dollars. That right there is about 45 million dollars in fees.

Now for the UDRP:

Of the $1500 filing fee for a single member panel and from 1-3 domain names, $1000 goes to the panelist, and WIPO keeps $500. Sooo.....

It looks as if WIPO is going to close out the year with something under 900 UDRP decisions. At $500 a pop, that comes to a gross of around $450,000. After paying their case managers and dealing with other administrative overhead, oh, gee, I can just see that they are going to be fabulously rich in no time. UNICEF probably takes in more money with their Halloween collection boxes.