Two cases where IGOs filed trademark lawsuits in the USA
Hi folks, To followup on our meeting today, I did some checking in the online PACER database of US court cases, to help determine whether the "myth" that IGOs never waive immunity from national court processes was true. PACER allows one to search by the "nature of the suit", so I limited my searches to category 840 (trademarks). After trying various names of parties, I found 2 different cases that are relevant. In 1994, The International Bank for Reconstruction and Development (i.e. The World Bank) filed suit in Delaware against "World Bank Limited" and won a default judgment. In 1995, the United Nations Children's Fund (i.e. UNICEF) filed suit in the Southern District of New York against "Art '95", and the matter concluded with a consent judgment. PDFs of the dockets for both cases are attached (the underlying complaints/responses weren't available online, presumably because of the age of the cases). I think these 2 examples help to shatter the myth, given that the IGOs actually *brought* the cases to the courts, as plaintiffs! Why could they not do the same in a domain name dispute? This goes to the entire purpose of this working group. The "problem" that IGOs claimed to have was the lack of a curative mechanism for alleged infringements of their names and acronyms by others. If the UDRP didn't exist, it's clear that their only alternative would be via the courts. The fact that IGOs have brought trademark cases to the courts on multiple occasions demonstrates that as a viable option, just like it is for any other complainant. The existence of the UDRP is not a replacement for the courts. It gives complainants an *additional* option. No one forces complainants to file a UDRP -- they could have instead filed in court (where they'd be subject to the relevant court jurisdiction). IGOs have said they can't use the UDRP -- we've already shown examples of IGOs filing UDRPs. Presumably they wanted to use the UDRP, to avoid having to go to court, where they'd be subject to the court's jurisdiction thus conflicting with their claimed immunity. Well, now we have cases where they've gone to court! In conclusion, these cases help illustrate that IGOs should be treated the same as everybody else, and that no "special" rules need to be created for them. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
Thank you George, I do want to clarify something. There are only two ways an IGO could be faced with the issue of "Mutual Jurisdiction" and a threat of loss of immunity: 1. IGO files UDRPS and respondent files legal action during or following the UDRP. 2. A complainant files against an IGO (the IGO being the respondent) and the IGO initiates litigation. This would be a very rare situation. The most likely is #1. In that case it is the IGO who initiated the proceeding to protect a commercially used intangible right. The only issues I see are: A. Does the IGO have immunity as concerns commercial use of a mark and/or enforcement of its trademark rights? I believe the prevailing authority is no and the research will bear this out. B. If the response to "A" is no then are we willing to create a system granting the, immunity? I am completely against doing so. Paul Keating
On 11 Mar 2015, at 9:14 pm, George Kirikos <icann@leap.com> wrote:
Hi folks,
To followup on our meeting today, I did some checking in the online PACER database of US court cases, to help determine whether the "myth" that IGOs never waive immunity from national court processes was true.
PACER allows one to search by the "nature of the suit", so I limited my searches to category 840 (trademarks). After trying various names of parties, I found 2 different cases that are relevant.
In 1994, The International Bank for Reconstruction and Development (i.e. The World Bank) filed suit in Delaware against "World Bank Limited" and won a default judgment.
In 1995, the United Nations Children's Fund (i.e. UNICEF) filed suit in the Southern District of New York against "Art '95", and the matter concluded with a consent judgment.
PDFs of the dockets for both cases are attached (the underlying complaints/responses weren't available online, presumably because of the age of the cases).
I think these 2 examples help to shatter the myth, given that the IGOs actually *brought* the cases to the courts, as plaintiffs! Why could they not do the same in a domain name dispute?
This goes to the entire purpose of this working group. The "problem" that IGOs claimed to have was the lack of a curative mechanism for alleged infringements of their names and acronyms by others. If the UDRP didn't exist, it's clear that their only alternative would be via the courts. The fact that IGOs have brought trademark cases to the courts on multiple occasions demonstrates that as a viable option, just like it is for any other complainant.
The existence of the UDRP is not a replacement for the courts. It gives complainants an *additional* option. No one forces complainants to file a UDRP -- they could have instead filed in court (where they'd be subject to the relevant court jurisdiction).
IGOs have said they can't use the UDRP -- we've already shown examples of IGOs filing UDRPs. Presumably they wanted to use the UDRP, to avoid having to go to court, where they'd be subject to the court's jurisdiction thus conflicting with their claimed immunity. Well, now we have cases where they've gone to court!
In conclusion, these cases help illustrate that IGOs should be treated the same as everybody else, and that no "special" rules need to be created for them.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ <WorldBank-v-WorldBankLimited-docket.pdf> <UnitedNationsChildrensFund-v-Art95-docket.pdf> _______________________________________________ Gnso-igo-ingo-crp mailing list Gnso-igo-ingo-crp@icann.org https://mm.icann.org/mailman/listinfo/gnso-igo-ingo-crp
Hi folks, On Wed, Mar 11, 2015 at 5:31 PM, Paul@law.es ZIMBRA <paul@law.es> wrote:
In that case it is the IGO who initiated the proceeding to protect a commercially used intangible right.
Indeed, Paul, I think this also relates back to the case that Jay Chapman brought up in the chat today, saved at: http://mm.icann.org/pipermail/gnso-igo-ingo-crp/2015-March/000300.html about "litigation conduct", and that "the advocates for state immunity did not intend for a state or an arm of the state to wield its immunity ‘to achieve unfair tactical advantages’.” In the absence of the UDRP, a complainant would be exposed to the jurisdiction of the courts (regardless of whether they're an IGO or not. The crafters of the UDRP recognized this, and ensured that no tactical advantage was gained by filing the UDRP -- there'd still be some court's jurisdiction that the complainant (initiator of the UDRP) would be subject to (in the event of an appeal, etc.). That jurisdiction (and ability to appeal to national courts) is a critical element to ensure that rulings of the UDRP providers/panelists are consistent with relevant national laws. Otherwise, they could ignore legal precedents in the national courts with impunity. The UDRP rules mention "applicable law" in multiple places, so panelists shouldn't ignore it. But, in the absence of any appeal mechanism to those national courts, one could foresee an unchecked and long-term deviation by the UDRP providers and panelists from those applicable national laws. Case in point, the AustinPain.com court judgment: http://ia601008.us.archive.org/18/items/gov.uscourts.cod.147273/gov.uscourts... which was in relation to the UDRP at NAF: http://domains.adrforum.com/domains/decisions/1536356.htm acts as a check against the *unanimous* 3-person panel who ordered the transfer (in the lawsuit, the UDRP decision was set aside, the domain name registrant kept the domain, and was awarded $25,000). BTW, I actually sent *multiple* emails to WIPO, to have the court decision in the AustinPain.com matter posted to their list of court cases at: http://www.wipo.int/amc/en/domains/challenged/ but guess what --- WIPO hasn't posted it! That should tell you something... Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
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Paul＠law.es ZIMBRA