What does a WIPO defense cost?

[Duckinla]

For the attorneys here or those who have been through it, in general, what does it cost to defend against a WIPO?

What are the typical attorney fees?
Do you and the attorneys travel, or is it all done by mail?
What other costs are involved?

 

[fab]

Great question! I don't think the lawyers here will be too responsive though, (you never know), probably better to askk those here who have had cases and hired lawyers.

 

[Steen]

"For the attorneys here or those who have been through it, in general, what does it cost to defend against a WIPO?"
I have heard between $5k and $8k.

"Do you and the attorneys travel, or is it all done by mail?"
Generally by mail.

"What other costs are involved?"
If you elect to have a three member panel you will pay $1500/$2k depending on WIPO or NAF. Other than your attorney and ensuring a three person panel the defence is largely "free."

 

[Zak Muscovitch]

WIPO Complaints, like NAF Complaints and other UDRP procedures, are done exclusively via email, fax and courier.

The associated expenses are couriers, photocopies, binding, and opting for a three-member panel rather the a single-member panel (as Steen pointed out). Some times the expenses are built into the lawyer's fee, other times they are in addition to the lawyer's fee.

The costs of legal fees to defend a UDRP procedure vary, depending primarily on the amount of work involved. Experienced domain name lawyers can take a quick look at the Complaint and determine how much time and effort will be involved.

Some domain name lawyers will charge a flat-rate fee, others will charge by the hour. In some cases, a combination of a flat-rate fee and a contingency fee will be used; for example, $500 to cover expenses and 30% of an eventual sale price for the domain, provided the defense is successful (but to get this type of deal there has to be an excellent case combined with a good potential to sell the name to the Complainant or another party). The other factors that some domain name lawyers look at is the ability of the client to pay (eg is the domain name generating revenues or does the client have the financial means to pay) and the potential to handle a volume of cases for a particular client at a reduced rate.

One thing that domainers should be aware of, is that most domain name lawyers tend to put in a lot more time and effort into cases than what they actually end up charging for. That's because it is such a niche field and domain name lawyers tend to love this area of law and business. Therefore, its usually the case that you will get great value for your money compared to hiring an attorney in most other fields.

Hope this helps people understand fee structures for domain name disputes.

Best Regards,

Zak
www.muscovitch.com

 

[jberryhill]

One thing that domainers should be aware of, is that most domain name lawyers tend to put in a lot more time and effort into cases than what they actually end up charging for. That's because it is such a niche field and domain name lawyers tend to love this area of law and business.

Amen to that. It's the legal practice equivalent of a video game addiction.

There is a wide swing between a complaint requiring a simple response, or a response that can largely be copied from prior responses, and a complaint that may present novel issues or may otherwise require heavy lifting. Just about anyone in this area can look at a complaint and provide an estimate that is more meaningful than a general answer to "how much does it cost". If you want a range, I've gone from free to 12K. So, there's your range.

Zak, I've been seriously burned on contingent arrangements by not including language to the effect of "or another party" as you noted above. I put in a good ten hours on a UDRP response under an arrangement similar to what you mentioned, and ever since winning the response, the guy has been trying to sell the domain name to anyone BUT the complainant. Arrrrrrggggghhhhh... (and you know who you are, ahem)

My wife won't let me do that anymore.

Ever since then, my standard rate is "20 percent less than Zak". Trouble is, Zak has gone to "20 percent less than Berryhill", so we are both going down the tubes.

 

[Creature]

In some cases, a combination of a flat-rate fee and a contingency fee will be used; for example, $500 to cover expenses and 30% of an eventual sale price for the domain, provided the defense is successful (but to get this type of deal there has to be an excellent case combined with a good potential to sell the name to the Complainant or another party).
www.muscovitch.com

Doing a deal with a lawyer for say 30% of a sale fee would make me feel uncomfortable as the client. There must be so many variables to consider . So many variables that me as a client might never understand. eg does the 30% apply for the rest of time and does the 30% fee only apply if the domain is sold to the complainant and is there tax to pay on top of the 30% etc etc? I would feel that I would need a 2nd lawyer to arrange the deal between me and the first lawyer. Anyway that's just how I might feel as a client.

 

[Steen]

One thing that domainers should be aware of, is that most domain name lawyers tend to put in a lot more time and effort into cases than what they actually end up charging for. That's because it is such a niche field and domain name lawyers tend to love this area of law and business. Therefore, its usually the case that you will get great value for your money compared to hiring an attorney in most other fields.

As a domainer I concur with Zak (he is an attorney) that hiring a well known lawyer who specializes in domain names often offers excellent value when compared to a general corporate lawyer. This was very much the case for me when I made the mistake of hiring an IP firm to handle one domain related matter. Even though their rates were lower I am sure a specialist in domain names would have done the job for much less and at a higher level in terms of quality. I can also attest that some of the C&Ds I have received and UDRP (never lost) have really made me feel bad for the complainant - their lawyers can do horrible work when not frequently involved in domain matters.

My two Canadian cents

 

[jberryhill]

I can also attest that some of the C&Ds I have received and UDRP (never lost) have really made me feel bad for the complainant - their lawyers can do horrible work when not frequently involved in domain matters.

That is a symptom of a well adjusted personality. In situations where a complainant's attorney keeps beating his head against a wall to no good end, it is a shame to think of the money and time wasted.

Doing a deal with a lawyer for say 30% of a sale fee would make me feel uncomfortable as the client.

Contingent fee arrangements are not unusual in other contexts. The problem of defense, in general, is that one has to pay in order to keep doing what one was doing before. Having a second lawyer look over any contract with your own lawyer is a good idea. There is a risk on both sides, though, as most of the attorneys who regularly do this work are solo practitioners or small firms. I don't live a particularly extravagant lifestyle, so there is only so much time I can afford to devote to speculative engagements before there is some concern about paying the bills at the end of the month.

By the same token, though, I have found that domainers in general are very generous people. One fee system I occasionally use is "whatever you think it was worth", and it has consistently worked out pretty well.

Once in a very long while a situation comes along where I'd pretty much pay for the entertainment value.

 

[Brett Lewis]

I try to charge what I think is fair, and it tends to be in the ranges discussed above. Each situation is different, so doing a straight one-price-fits-all does not work out well, but I can usually tell how much work will go into a filing and can benchmark from there. A good domain name attorney will realize that some clients can only afford to pay so much, but will still want provide the best defense and will do the work anyway. There is a challenge in it, particularly when the other side is making overreaching claims and being arrogant. I was told the other day by a very nice gentleman to "bone up" on domain name law. You can be certain, as can he if he reads this post, that that client's matter will receive extra special attention.

I can also confirm that I have seen some really off-the-mark papers submitted for which clients undoubtedly spent in excess of $10k drafted by construction lawyers and general practitioners. Not just to plug lawyers like John and I, but we do deserve a little credit.

Brett
www.lewishand.com
[email protected]

 

[Dave Zan]

I'd like to see John, Zak, and Brett compete in a Jeopardy-type UDRP game
show.

 

[Duckinla]

John ,Zak, Brett, thank you for showing up to the thread to shed light on this. Some domainers are veterans of these things, many of us are not. Good to have clarification of what we can expect if the time comes.

Maybe Microsoft legal can chime in now and tell us about the other side, what it costs to be the complainant. :lol:

 

[jberryhill]

what it costs to be the complainant.

I'd be willing to bet that in almost every UDRP that Brett, Zak or I have defended, the complainant spent more.

Because of a quirk in the UDRP fee structure at WIPO, my favorite moment is when WIPO asks the complainant to pony up an additional $500 after the response.

WIPO charges a complainant $1500 to file a complaint for a single member panel. The total fee for a three member panel is $4000, and the UDRP rules require the fee to be split when the respondent requests a three-member panel. Therefore, whenever I file a WIPO UDRP response, the golden moment is when the attorney for the other side says to his client, "We have a fifty page response (with exhibits) that cites a dozen cases against our argument and, oh, you have to pay another $500 or the case will be dismissed."

It's like... "Okay, now tell me the GOOD news."

 

[Duckinla]

Does that mean that the respondant doesn't pay any of the fees for a single-member panel, only when they request 3? I didn't really understand that part.

Is three vs one member panel considered better for one party or another? I would guess that whoever has the best case is better served by a 3 member panel? Less chance of getting beat by one bad judge?

 

[jberryhill]

Does that mean that the respondant doesn't pay any of the fees for a single-member panel, only when they request 3? I didn't really understand that part.

Single member panel - Complainant pays entire fee.

Three member panel - Respondent pays 1/2 fee.

The fees are different at the NAF and WIPO.

In a single member panel, the panelist is chosen by the dispute resolution provider.

A three member panel at WIPO is composed as follows:

Respondent picks three panelists - one of those is selected for the panel.
Complainant picks three panelists - one of those is selected for the panel.

Then, both parties are provided with a list of five panelists and asked to rank them according to preference. WIPO then purports to select the presiding panelist based on a maximization of preference.

At NAF, both parties provide a list of three, and then are asked to strike two names from a list of five provided by the NAF.

If you think about it long enough, there should be no functional difference between the NAF and WIPO presiding panelist selection mechanisms. Under a maximization of preference, WIPO should never seat a panelist who was ranked lower than third on either parties' preference list. Hence, ranking any two panelists as four and five should have the same consequence as striking them, as at the NAF. Neither the NAF nor WIPO understand that.

As far as results go, you can divide UDRP cases into several categories for analysis, and this was done at my suggestion in a paper by Prof. Milton Mueller at Syracuse University entitled "Rough Justice". Looking at:

Single member, default cases
Single member, contested cases
Three member, respondent requested, contested cases

he found that the third scenario resulted in a win percent for the respondent over 60% - the only combination in which the majority of results were in the respondent's favor.

Now, since requesting a three member panel requires payment of a fee, that result may reflect, as Duckinla points out, a determination by the respondent that it has a strong case and thus does not want to risk getting a relatively unreflective panelist. There is a wide variation of thoughtfulness among UDRP panelists, hence having a measure of control over the panel composition can make a big difference.

The absolute best part, though, is that even though the parties are not supposed to communicate their strikes/preferences to the other side, it turns out that more often than not the complainant will copy his/her strikes to the other side. So, by waiting until the deadline for submitting your strikes, you can often effectively pick the presiding panelist by using your two strikes to eliminate two of the remaining three on the list of five.

If you have a defensible case, then going with a single member panel is like driving without seatbelts.

 

[radioz]

Unless you are defending a very valuable name or if you're in a very, very questionable situation legally, I'd consider 'doing it myself'. I did have a WIPO challenge for 'Ambience.biz' I would have sold the name for $400 but the litigious company involved chose to 'purchase' a 3 judge panel for $4,000 to hear the case.

In this case, the companies name was 'Ambience Lighting'. They owned the US trademark for 'Ambience' as related to lighting. They claimed that they were well known world wide and that I had to know of them (I and most people don't!). They also claimed that they owned the rights to all uses of this word (they didn't). They also claimed that my SEDO page was causing them great harm as the top corner, secondary links, mentioned 'lighting'.

I fought it on the basis of the facts that their brand was not well known, their trademark was owned for the category of 'lighting and small decoratives' only and that there were other TM owners for the term plus areas of application that weren't owned, there is a big company in Australia and many smaller companies named 'Ambience Lighting', and that their trademark application had been disavowed in Canada and other countries. I ended up spending $125 and a lot of time. They spent $4,000 plus legal fees. I won. They lost.

Dan's Domain Site is well worth checking for ideas as to how to fight a WIPO challenge. It's not an awe inspiring name and he's not a lawyer but he has some excellent info there. You should also look through past cases for previous arguments and see what worked and what didn't. Most previous challenge results are available on the WIPO site.

You do get to enter picks and strikes for the judges that you want or don’t want as does the plaintiff. Even though they paid, you get the same input as they do. You should look for judges who judged favorably for positions similar to yours in previous cases. This probably shouldn't make a difference but it does. The terms 'Realtor.biz' and 'Realtors.biz' were ruled on by different panels. 'Realtor.biz' went to the TM owner of the term. 'Realtors.biz' was ruled to be a trademark that was so common that the term was now a part of general speech. The respondent did not reply to defend his position in either case, so the field was pretty even in both cases. There is much more advice on this matter in the post directly above right here. WIPO trials are held by mail with the judges located around the world. You won't need to appear in person anywhere for these disputes and the worst that can happen is that you loose your domain name.

It is important to review the documents that the plaintiff will be supplying to you. You will want to carefully answer their arguments. Secondarily, if you believe that you have other arguments to make, add them but, first, make sure that you respond to theirs. You will likely want many screen shots of supporting web pages, etc. The plaintiff supplied papers will likely help give you an idea as to what you will need to do. General info has to how to format your reply is at the WIPO website which I have linked at my site (see below).

I have links for resources that I used on the 'links' page of my domain names site, Names2Buy, under Domain Law & Trademarks. I make no money from this, to be clear.