Supreme Court Rules on WIPO Procedure Costs

[aww]

Any idea how often "panelists" get re-used? Good income boost I would think?
Found this: "The WIPO arbitration centre received 1,100 cases in 2003 or roughly three complaints per day"

 

[jberryhill]

Good income boost I would think?

Hardly. Most of the panelists are lawyers in private practice with rates much higher than my $275 per hour. Between reading the complaint, the response, dealing with any supplemental garbage, and then writing the decision, I sincerely doubt most of them are breaking even.

 

[Dave Zan]

Hardly. Most of the panelists are lawyers in private practice with rates much higher than my $275 per hour. Between reading the complaint, the response, dealing with any supplemental garbage, and then writing the decision, I sincerely doubt most of them are breaking even.

Would any panelist bother to complain about this? :-D

 

[jberryhill]

Would any panelist bother to complain about this?

Depends on how much of a resume' filler it is for them. There are some who seem to have lost interest in taking as many cases as they used to.

For some, it's easy work, and it shows in their cut-and-paste decisions.

 

[HOWARD]

John

I love your posts, but I can't understand why you would invest so much time trying to teach someone who is "unteachable"?

 

[Dave Zan]

John

I love your posts, but I can't understand why you would invest so much time trying to teach someone who is "unteachable"?

I'm sure he knows that. But of course, his time is his to do as he wishes.

If it's any consolation, though, at least the others are getting a real education
from a real pro.

Great education, John. Many thanks. k:

 

[Garry Anderson]

John> 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.

Dear John - NO WORD GAMES - please do not get vexed.

If you cannot take tough constructive criticism - you should have said so ;-)

I am sure you would admit my objective analysis is somewhat better than an anencephalic morons.

The reason for attention to the facts will become clear - read on - you may even be right

As you are unable to take this unbearable pressure:

I would like to thank John for confirming the accuracy of my central argument - that being (to use John's own words):

"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."

Everybody can see I had previously said that nobody should - quote, "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."

He also said, "Nobody is going to court on an action "for recovery of UDRP costs" - they are going to court on an action for trademark infringement."

The article clearly did not say that.

It said, "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."

It then went on to explain this decision.

This is not a "neurotic mind" - it will be explained why this is highlighted.

Okay then - the fact is this - everybody can believe in one of two things:

1. The lawyer writer misrepresented the facts in her article:

She left out the most important and essential key stage - that of a trial to rule on the unlawfulness.

John calls it summarizing for her to leave out this most important stage.

I am sure he would not deny that this trial is most important - nor deny that it is essential for anybody wanting costs - nor deny that it is key to getting costs.

When the article is used to 'drum up business' (full contact details supplied) - it must surely be misrepresentation to imply that costs can be recovered without mentioning that unlawfulness has to also be proven in a court of law.

You will note - this "summary" is clever enough to give details of the UDRP stage - yet misses out on a VERY important fact - "LIABILITY HA [TO BE] ESTABLISHED AT THE TRIAL LEVEL".

I believe this is essentially John's position - I am sure he will put me right - even though his blood pressure may go up a bit ;-)

OR

2. The lawyer writer accurately and fully reported the facts in her article:

This being, the Complainant, after winning case - "went on to sue the defendant in Austria for costs incurred during the WIPO procedure, claiming them as damages".

This - as both John and I pointed out - is clearly unlawful - it should require a court decision on unlawfulness first.

This is essentially my position.

Based on evidence as presented (and given history of subject) I believe my position correct - however will certainly admit that John could be right.

P.S.

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

UDRP 'arbitration' rules are clearly not impartial - an essential in arbitration.

I am very glad to see you agree with me about UDRP not being arbitration - why can't everybody else be honest?

P.P.S.

Howard> John - I love your posts, but I can't understand why you would invest so much time trying to teach someone who is "unteachable"?

I also love John's posts - he is the only good lawyer with the balls to answer me ;-)

You are a good lawyer - please tell this "unteachable" person - of what am I ignorant that counters the fact:

That only way to avoid confusion with ordinary domain names is to have some sort of identifier to identify them - to replace registered trademark symbol ® - like a protected .reg TLD?

What has John not 'taught' me?

P.P.P.S.

Davezan1 - yes, we know you like John too

 

[jberryhill]

This being, the Complainant, after winning case - "went on to sue the defendant in Austria for costs incurred during the WIPO procedure, claiming them as damages".

This - as both John and I pointed out - is clearly unlawful - it should require a court decision on unlawfulness first.

Geezus you are dense, Garry. That's what they went to court for.

 

[Garry Anderson]

John> That's what they went to court for.

That is your assumption - based on what should legally be the case.

Again - I do not disagree - you may be entirely correct.

However - we know for a fact that these cases are not treated lawfully - (i.e. corrupt overreaching corporations require no tort to accuse a legal domainer).

Are you really saying that author of article, Dr Barbara Kurz (Partner at Preslmayr Attorneys at Law - Vienna), is so incompetent as to leave out the essential key stage - yet include detail of UDRP phase?

What do we know about author - Barbara Kurz?

Firstly, we know that the professional classes have a great propensity to stick together when looking after the interests of their customers - and for self interest of course.

It matters little how 'dodgy' the interests be - best major examples perhaps are Enron and Worldcom (I have other current examples).

It is very important to note - that when somebody gave the alarm - the evidence was not believed - as the amount of corruption was too incredible.

Barbara Kurz would be perfectly knowledgeable to take advantage of a corrupt system for clients and her legal firm.

It is impossible to know if her morals would allow her to do so for a fact.

Secondly, we know she has very good experience.

Bio: Dr. Barbara Kurz, LL.M., born in Vienna in 1974, earned her master of laws and her doctorate from the University of Vienna in 1996 and 1999, graduated from an LL.M. program at Columbia University (NY, USA) and was awarded her US master of laws in 1998. In 1999 she was admitted to the NY State Bar as attorney-at-law. From 1999 to 2003 she has been working as an associate, between 1999/2000 she also worked as an assistant at the Institute of Commercial Law of the University of Vienna. She became a lawyer and partner in May 2003 and specialises in IP-law, competition law, e-commerce, domain disputes as well as litigation.

It is very unlikely that she is really crap at summarising main points of a case, so as to miss a most important key stage.

Thirdly, the article more or less says, "Come to us with your UDRP case and get your costs back".

If another court case were required to prove unlawfulness, wouldn't this be misrepresentation to potential clients?

Do you really believe that Dr Barbara Kurz is so incompetent?

 

[jberryhill]

No, Garry, I believe the article wasn't written for pinheads.

If you are concerned about someone's writing style, and the fact that they only reported the significant part of the outcome of the issue on appeal, then why don't you read the complete facts here:

http://www.internet4jurists.at/entscheidungen/ogh4_42_04m.htm

Do you see where the court refers to the registration having violated UWG § 1, ABGB § 1293 ?

That section clearly states:

§ 1. Wer im geschäftlichen Verkehr zu Zwecken des Wettbewerbes Handlungen vornimmt, die gegen die guten Sitten verstoßen, kann auf Unterlassung und Schadenersatz in Anspruch genommen werden.

Happy now?

 

[Garry Anderson]

Sorry John - you are wrong - I am right.

Logically the only way to resolve this was to go to the author.

Barbara Kurz is a really nice lady.

There was no "trial court down at the bottom of this set of appeals" - like you said.

There was no judgement on the unlawfulness of Defendant to the greater legal standard of the Courts.

To use Barbara Kurz's own words, it was "merely stated that the defendant was liable for unlawful domain grabbing" from UDRP.

Do not feel too bad - like I say - you could have been correct.

After all, I only used "balance of probability" - we both know for a FACT that this law is based on corruption.

 

[Dave Zan]

Davezan1 - yes, we know you like John too

You must be a mind reader then, Garry.

Tell me something, though: between someone who continues reading and
giving personal commentary and someone who literally works on the topic of
discussion, who (I'm sure) has many people who can vouch for the latter's
work, who do you think is more likely to be more credible?

 

[jberryhill]

who do you think is more likely to be more credible

That's not a valid method of argument, Davezan. I'm wrong about things all of the time. But not on this one. The plain fact that the court recognized, as all courts to consider the issue have recognized, that the UDRP is not an arbitration under national law, and that an independent review is needed to determine liability under national law, makes it clear that Garry has an issue with the way some lawyer wrote an article, but not what actually happened in this case.

Logically the only way to resolve this was to go to the author.

That's absurd. If you want to know what the court decision was, you read the court decision. Appellate decisions deal with the specific issue on appeal. I will admit that my German is really rusty, but this looks like an interlocutory appeal on UDRP costs from a case brought under the Austrian trademark statute.

No, they don't dwell on UWG § 1, ABGB § 1293, because on the facts that is a very clear issue. But they make it very clear that the domain registration is illegal under Austrian law, and that the plaintiff is entitled to recover damages.

Read what the court said about UDRP 4(k), Garry:



Punkt 4 k der Einheitlichen Grundsätze des Domainnamen-Schiedsverfahrens sieht - wie oben erwähnt - ausdrücklich vor, dass die Parteien nicht gehindert sind, die Klage vor ein zuständiges Gericht zu bringen, um eine unabhängige Entscheidung zu erlangen, entweder vor oder nach Beendigung eines Streitbeilegungsverfahrens. Damit ist - wie vom Berufungsgericht richtig erkannt (§ 510 Abs 3 ZPO) und vom Beklagten auch nicht in Zweifel gezogen - klargestellt, dass das Streitbeilegungsverfahren kein Schiedsverfahren im Sinne der §§ 577 ff ZPO ist. Der Anspruch auf Ersatz der in diesem Verfahren aufgelaufenen Kosten ist daher kein prozessrechtlicher Anspruch, dessen Geltendmachung mit einer besonderen Klage ausgeschlossen wäre (zu den im Gegensatz dazu prozessrechtlich zu beurteilenden Kosten des Schiedsverfahrens s 1 Ob 803/52 = SZ 25/252). Die Klägerin hat die ihr im Streitbeilegungsverfahren entstandenen Kosten aufgewendet, um die Übertragung der Domain zu erreichen. Durch die Übertragung wird weiterer Schaden abgewendet, der der Klägerin dadurch droht, dass sie als international tätiges Unternehmen im Internet nicht auch in der Top Level Domain .com unter der aus dem für sie geschützten Zeichen gebildeten Domain auftreten kann. Die naheliegende Erwartung ihrer Geschäftspartner, durch Eingabe dieser Domain auf die Website der Klägerin zu gelangen, wird enttäuscht, wenn sie zur Website deli.com umgeleitet werden, die mit dem Unternehmen der Klägerin nichts zu tun hat. Der Beklagte hat die Aufwendungen der Klägerin durch die rechtswidrige und schuldhafte Registrierung der Domain adäquat verursacht; er ist ihr daher zum Schadenersatz verpflichtet. Er hat die Aufwendungen der Klägerin insoweit zu ersetzen, als diese sinnvoll und zweckmäßig waren („Rettungsaufwand"; Reischauer in Rummel, ABGB² § 1293 Rz 10; Schwimann/Harrer, ABGB² § 1293 Rz 29, jeweils mwN; s auch 4 Ob 31/94 = SZ 67/35).



Particularly note the part in bold above - "die rechtswidrige und schuldhafte Registrierung der Domain" - the registration of the domain in violation of the law - is not talking about the UDRP.

John

I love your posts, but I can't understand why you would invest so much time trying to teach someone who is "unteachable"?

The reason why, Howard, is because Garry gives people advice which is not only bad, but dangerous.

 

[Garry Anderson]

Davezan1> You must be a mind reader then, Garry.

It was meant in jest - sorry if you took it wrongly :-(

Davezan1> between someone who continues reading and
giving personal commentary and someone who literally works on the topic of
discussion, who (I'm sure) has many people who can vouch for the latter's
work, who do you think is more likely to be more credible?

Credibility - if you are talking about me and John - then John certainly has much greater crediblity (deservedly so).

If you are saying that I give anything other than what I believe to be the truth - then provide some evidence.

However - like John says, this is not a case of believing me or him - people are wrong all the time - we all make mistakes.

I prefer to make my own mind up - using objective logic - based on all known facts.

 

[Theo]

I foresee a new type of reality show: The Attorneys - whereupon 2 practitioners of the Law face off on a subject - one has to play Devil's advocate :-D

 

[Dave Zan]

None taken, Garry. I meant that in jest too, actually. :-D

EMail sent, John...

 

[Garry Anderson]

Garry> Logically the only way to resolve this was to go to the author.

John> That's absurd. If you want to know what the court decision was, you read the court decision.

We were also discussing the article - the learned lawyer author would also have known about the court decision - she was certainly no amateur.

As to your main point.

Hello - is there anybody in ;-)

There was no "trial court down at the bottom of this set of appeals" - was there?

It was "merely stated that the defendant was liable for unlawful domain grabbing" - when "unlawful domain grabbing" had already been decided in UDRP.

The case was merely to get a judgement for costs incurred during the WIPO procedure - which, I am sure you will agree, is lesser charge than being tried for trademark infringement or "unlawful domain grabbing".

Do you honestly believe that having "merely stated that the defendant was liable for unlawful domain grabbing" is anything like having a trail to prove the defendant's guilt or innocence?

You more or less have been saying the same as me about the procedure that should be followed - it seems you are now backing down.

Howard> I love your posts, but I can't understand why you would invest so much time trying to teach someone who is "unteachable"?

John> The reason why, Howard, is because Garry gives people advice which is not only bad, but dangerous.

John - you know my advice before going to UDRP or court, is that people should see a good lawyer, like you or Howard, before deciding on these matters.

My opinions are informed by know facts - we all make mistakes and I truly welcome when you point mine out.

We know facts beat the opinion and judgement of anybody - like the fact that people can tell a trademark domain from normal one, simply by telling them

However - it can be seen above that Howard seems to have ignored this fact and you avoid answering some of the more easier question - like about tort in UDRP - I wonder why ;-)

Howard gave more than the usual propaganda, used to put down dissent ("He is ignorant and does not know what he is talking about") - by saying that I am "unteachable" - basically stupid as well.

What specific opinion of mine do you consider dangerous (and why) John?

 

[jberryhill]

We were also discussing the article

...because that is how the thread started until I found the actual decision. I'm more interested in discussing "what really happened", aside from the fact that your interpretation of the article made no sense. And what really happened is fabulously mundane - the court ruled that the plaintiff could be awarded policing and enforcement costs if the domain name registration is actually found to be illegal in an independent determination under national law. The court cites UDRP 4(k) for the point about independent determinations under national law, and the court cites the Austrian trademark law for the actual law under which the independent determination is to be made.

Do you honestly believe that having "merely stated that the defendant was liable for unlawful domain grabbing" is anything like having a trail to prove the defendant's guilt or innocence?

You really don't get how appeals work. NOBODY is appealing the issue of whether the domain registration was illegal. NEITHER the plaintiff nor the defendant were arguing that issue on appeal. THAT wasn't the issue before the court. THIS proceeding, at the appellate level, was not ABOUT whether the domain registration was illegal.

Let me take an example. Let's say I am arrested for shoplifting, found guilty, and then sentenced to fifty lashes. In the US, I would appeal the sentence on the ground that the Constitution forbids cruel and unusual punishment. We would go to the appeal court and argue about whether or not the State could apply the fifty lashes. The opinion would go something like this:

"John was found guilty of shoplifting, and sentenced to fifty lashes. Because that sentence violates the Constitution, we remand the case back to the trial court to sentence him to six months in jail under the shoplifting statute, like they should have done the first time"

NOTHING... NOTHING in that decision is going to get into whether or not I was actually guilty of shoplifting - that's already taken for granted by the time I am appealing the sentence. I'm NOT EVEN ARGUING that I'm not guilty of shoplifting by that point. That is why neither the decision, nor some summary article about the decision, is going to discuss whether I did or did not actually steal something from a store.

What WAS being argued in this case, whether it was an interlocutory appeal or an appeal after a trial (e.g. some issues can be appealed even while the underlying trial proceeds), was whether a plaintiff could recover WIPO costs in a trademark infringement damage award. The argument for awarding them is that IF the domain registration was illegal, then it is a sensible cost of enforcement that should be included. The argument against is, REGARDLESS of whether the domain registration was illegal, the court shouldn't award the cost because the UDRP by its own terms does not award costs.

But what you absolutely fail to understand is this - in the arguments pro & con about whether WIPO costs are includable in trademark infringement damages, the underlying illegality of the domain registration is irrelevant.

Obviously if the domain registration was legal then the plaintiff isn't going to get any damages. Nobody would discuss that point in either the decision, or in an article about the decision, because nobody would assume their reader is that freaking stupid.

There was no "trial court down at the bottom of this set of appeals" - was there?

There had to be. You don't get into an appellate court unless you are appealing a ruling of a trial court.

What? You think you can wander into an appellate court with "I want you to award me damages for X"? What on earth sort of paper do you file to start one of these non-appeal appellate proceedings, Garry?

What specific opinion of mine do you consider dangerous (and why) John?

You know full well that I cannot post about what someone has consulted with me in my capacity as an attorney.

We went over this before. I was contacted by someone who wanted a "second opinion" because he believed he'd already gotten an opinion from a lawyer. In fact, he had gotten advice from you.

This person had several domain names of the form [TM][product].[TLD], where "product" was the actual goods sold under the fanciful TM. He told me that you told him the domains were perfectly fine because "product" was a generic word. In fact, he sent me a copy of what you sent him.

This person, furthermore, lives in the US on a fixed income, has virtually no liquid assets, and owns a home. After consulting with you, this person felt perfectly fine ignoring the c&d letter he had received, and potentially exposing himself to the loss of everything he has in an action for which he had no credible defense or means of paying for.

What you did was irresponsible and dangerous.

I foresee a new type of reality show: The Attorneys - whereupon 2 practitioners of the Law face off on a subject - one has to play Devil's advocate

You see what I mean, Garry? Because of the way you pointlessly blather on, people mistake you for an attorney.

 

[Dave Zan]

We went over this before. I was contacted by someone who wanted a "second opinion" because he believed he'd already gotten an opinion from a lawyer. In fact, he had gotten advice from you.

This person had several domain names of the form [TM][product].[TLD], where "product" was the actual goods sold under the fanciful TM. He told me that you told him the domains were perfectly fine because "product" was a generic word. In fact, he sent me a copy of what you sent him.

This person, furthermore, lives in the US on a fixed income, has virtually no liquid assets, and owns a home. After consulting with you, this person felt perfectly fine ignoring the c&d letter he had received, and potentially exposing himself to the loss of everything he has in an action for which he had no credible defense or means of paying for.

What you did was irresponsible and dangerous.

You see what I mean, Garry? Because of the way you pointlessly blather on, people mistake you for an attorney.

Any updates on that "case"? Of course, no need to say if you're retained for
it, John.

 

[jberryhill]

And if you want to argue the actual issue that was on appeal here.....

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).

Let's try an example.

Davezan runs a company that owns highway billboards and rents space to advertisers. Mr. Webname comes up to Davezan and says, "I would like to rent one of your billboards for a year and put my ads on it." Davezan says, "Fine, that will cost you $1000 for the year, and I have an early termination right where I can terminate your contract at any time for $500". Davezan collects his rental fee and Mr. Webname has his ads put on the billboard.

Six months passes by.

I am driving down the road one day and I pass the billboard. To my horror, I see Mr. Webname's ad - which uses my trademark to sell his competing products. Noting that the billboard has a small sign below the main portion, saying "Davezan billboard rentals" I give Davezan a call and demand he get that infringing ad off of his billboard.

Davezan tells me, "I'd love to do it John, but I will only take it down if you either get a court order or else pay me the $500 early termination penalty in my contract with Mr. Webname".

Now, I fully intend to go to court, and I know that will take time, so I go ahead and pay Davezan the $500 termination penalty of the lease so that Davezan can take the ad down today.

In my court action, I sue Mr. Webname for trademark infringement. As damages, I claim all of his profits from having run the ad for six months, plus the $500 I had to pay to Davezan to get the ad taken down.

The court finds in my favor. Mr. Webname appeals the award of the $500 arguing, "Hey, it's not my fault that Davezan charges $500 to take down the ad, and besides Berryhill got what he paid for from Davezan."

The appeals court is going to say something like this: "Berryhill paid the $500 because it was the quickest way for him to put a stop to your trademark infringement. He wouldn't have paid anyone a dime if you weren't infringing his trademark, and there is nothing wrong with him doing what was necessary to put an immediate stop to your trademark infringement. The bottom line is that you infringed his trademark, and it cost him $500 to put a prompt end to your infringement. Therefore, we are going to allow him to recover that $500 from you."

Does anyone other than Garry see a problem with that?