WWF.com wipo won by GregR

[Dave Zan]

20 calendar days from commencement.

Sure would be nice if ICANN reviews the UDRP policies anytime soon. Last time
I read anything about this was on May, I think.

Congrats on the win, by the way.

 

[jberryhill]

Sure would be nice if ICANN reviews the UDRP policies

Given the composition of the ICANN policy making apparatus, I would not expect an ICANN review of the UDRP to result in changes more favorable to domain registrants.

 

[Dave Zan]

That's...what I was afraid of. Oh vell...

 

[typist]

Presecution? It was wipo, not a court. The only thing they decide is the ownership of a domain name.

True. But some courts appear to have used wipo decisions as a basis for awarding damages, like stated below, in Austria. It would be interesting to know if someone has ever been sued for damages after a reverse hijacking attempt.

http://www.internationallawoffice.com/newsletters/detail.aspx?r=9027&i=38929

For the first time, the [Austrian] Supreme Court has ruled on the issue of whether the costs of a World Intellectual Property Organization (WIPO) procedure for a domain name dispute can be claimed as damages from the defeated party.(1)

The plaintiff, a registered limited liability company with its principal place of business in Vienna, won a case involving the 'delikomat.com' domain name at the WIPO Arbitration and Mediation Centre (a dispute resolution service provider accredited by the Internet Corporation for Assigned Names and Numbers).(2) The centre's Administrative Panel decided that:
the domain name in question was confusingly similar to the complainant's DELIKOMAT trademark;
the respondent had no rights to or legitimate interest in the domain; and
the respondent had registered and was using the domain in bad faith.

Accordingly, the registrar transferred the domain name to the complainant.

The applicable WIPO rules do not oblige a defeated respondent to reimburse the successful party for the costs of the proceeding. Rather, the complainant is solely responsible for paying all fees.

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. Thus, a defendant who is guilty of so-called 'domain grabbing' must reimburse the plaintiff for costs incurred, to such an amount that they are reasonable/expedient.

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. Accordingly, costs that arise are not regarded as mere procedural claims which cannot be raised in a separate claim. The plaintiff has two options in order to prevent the defendant from using the disputed domain; to sue him for either transfer or deletion of the domain. While a claim for deletion of the domain name could have been brought in Austria in this case, the execution of the Austrian judgment would have had to be effected in the United States (since the disputed domain was a US-registered '.com' domain). In theory, the same is true for a claim requesting the transfer of the domain name, although the Supreme Court has yet to rule on this issue. According to the Supreme Court, Paragraph 4(k) of the Uniform Domain Name Dispute Resolution Policy provides that the administrative proceeding shall not prevent either the domain name registrant or the third party from submitting the dispute to a court of competent jurisdiction for independent resolution. Thus, it is possible for a party to commence a lawsuit in court before or after an administrative proceeding.

The Supreme Court briefly outlined the advantages of the WIPO procedure (ie, speed and the lack of any requirement for separate execution proceedings) and concurred with the appellate court, which held that the plaintiff had chosen the best way of recourse by opting for the WIPO procedure. The plaintiff incurred certain costs to obtain the transfer of the disputed domain and to prevent further damage. These costs were caused by the defendant's unlawful, bad-faith domain registration. Accordingly, the defendant was liable to pay damages.


For further information on this topic please contact Barbara Kurz at Preslmayr Attorneys at Law by telephone (+431 533 16 95) or by fax (+431 535 56 86) or by email ([email protected]).


Endnotes

(1) Supreme Court decision of March 16 2004, 4 Ob 42/04m – 'delikomat.com'.

(2) WIPO Arbitration and Mediation Centre, Administrative Panel decision of February 20 2002, Case D2001-1447 (the decision can be found at http://www.arbiter.wipo.int/domains/decisions/html/2001/d2001-1447.html).