WIPO Sucks
2006-02-14 00:33:22 UTC
WIPO Arbitration
Bad Politics
If you are concerned with decisions made by WIPO you may want to read
of a case in the United States Court System, and then misquoted by WIPO
for one of their cases - and WIPO won't even fix their own errors . . .
My question is; "How many other decisions by WIPO have intellectual
property right errors that benefit the mighty and are unfair to the
weaker nations?"
Please read the WIPO response to email on factual errors . . .
__________________________________________________________
Dear Sir,
UDRP decision once notified cannot be changed.
To conduct specific research concerning UDRP decisions published on our
website, please go to http://arbiter.wipo.int/domains/search/index.html
and type under "Full Text Search" any key word you want.
Sincerely,
Annick Regard
WIPO Arbitration and Mediation Center
------------------------------------------------------------------------------------------------------
***NEW*** The WIPO Arbitration and Mediation Center Plans to Hold the
Following Events:
- WIPO Workshop for Mediators in Intellectual Property Disputes,
Geneva, June 15 and 16, 2006
- WIPO Advanced Workshop for Mediators in Intellectual Property
Disputes, Geneva, June 19 and 20, 2006
http://arbiter.wipo.int/events/workshops/2006/mediation/index.html
The WIPO Arbitration and Mediation Center is an international provider
of non-profit services for the out-of-court resolution of commercial
disputes. The Center specializes in cases arising out of technology and
intellectual property transactions, such as licensing, R&D and
distribution agreements.
WIPO arbitration and mediation contract clauses:
http://arbiter.wipo.int/arbitration/contract-clauses
WIPO Internet domain name dispute resolution:
http://arbiter.wipo.int/domains
Greetings.
Please forward to the proper department as your contact form on
wipo.int is
not functioning properly.
------------------------------------------------------------------------------------------------------
The WIPO decision found at
http://arbiter.wipo.int/domains/decisions/word/2003/d2003-0369.doc has
a problem with one of the references.
The statement in paragraph 6 "...in bad faith..." can not be accurate
as the final decision from the United States federal judge states the
following:
[quote]
Opinion and Order - United States Trademark Law
FILED
2001 April 16
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
CV 99-1290-MA
OPINION AND ORDER
ZIPEE CORP., a Washington corporation, and ZIPEE.COM, INC., an Oregon
corporation,
Plaintiffs,
v.
UNITED STATES POSTAL SERVICE,
Defendant.
Kristine Olson
United States Attorney
District of Oregon
William W. Youngman
Assistant United States Attorney
1000 S.W. Third Ave., Suite 600
Portland, OR 97204-2902
Patricia K. Norris
Keith Beauchamp
Jennifer Van Kirk
Lewis and Roca LLP
40 North Central Ave.
Phoenix, AZ 85004
Attorneys for Defendant
MARSH, Judge.
Plaintiffs originally filed this action seeking declaratory and
injunctive relief; defendant filed an answer asserting counterclaims
for federal trademark infringement under the Lanham Act, 15 U.S.C.
1114, unfair competiton under the Lanham Act, 15 U.S.C. 1125(a),
federal and state statutory dilution, 15 U.S.C. 1125(c) and Wash. Rev.
Code 19.77.160 and common law trade name infringement and unfair
competition. On December 12, 2000, I granted defendant's motion for
summary judgment on the issues of infringement and cybersquatting and
denied plaintiffs' cross-motion for summary judgment. Thereafter,
defendant requested dismissal of its remaining counter-claims. On
January 29, 2001, I entered a judgment permanently enjoining plaintiffs
and any of their associates from using the postal services' marks and I
awarded defendant its taxable costs. After entry of judgment, I granted
plaintiffs' attorneys' motion to withdraw. There has been no
substitution of counsel for plaintiffs.
Defendant now moves for attorney fees and non-taxable costs totaling
$1,183,403.22 under the Lanham Act, 15 U.S.C. 1117(a). Plaintiffs have
filed no opposition. The Lanham Act provides that a court may award
reasonable attorney fees in "exceptional cases." Although the Act fails
to define what constitutes an "exceptional" case, the Ninth Circuit has
held that a trademark case is exceptional if the infringement is
"malicious, fraudulent, deliberate or willful." Gracie v. Gracie, 217
F.3d 1060, 1068 (9th Cir. 2000). Awards are "never automatic." Rolex
Watch, USA, Inc. v. Michel Co., 179 F.3d 704, 711 (9th Cir. 1999).
The secision to award fees rests within the sound discretion of the
trial judge. Gracie, 217 F.3d at 1068. A finding of willful
infringement will support a fee award. See Id. Fees may be denied where
the legality of the activity is "unsettled," see e.g. Securacomm
Consulting, Inc. v. Securacom, Inc., 224 F.3d 273, 279 (3rd Cir. 2000),
or where the claims are "not unfounded" or brought for purposes of
harassment. See e.g. National Ass'n of Professional Baseball Leagues,
Inc. v. Very Minor Leagues, Inc., 223 F.3d 1143, 1149-50 (10th Cir.
2000).
The prevailing party bears the burden of demonstrating the exceptional
nature of the case by "clear and convincing evidence." Seven-Up Co. v.
Coca-Cola Co., 86 F.3d 1379, 1390 (5th Cir. 1996); Leatherman Tool
Group, Inc. v. Cooper Industries, Inc., 1998 WL 349554, 47 U.S.P.Q. 2d
1049, 1050 (D. Or. 1998).
Defendant contends that it is entitled to fees because plaintiffs'
infringement was willful and based upon evidence relied upon in support
of the cybersquatting counterclaim relative to plaintiffs' registration
of other internet domain names that are confusingly similar to other
businesses.
While I found infringement and cybersquatting established in this case,
there was a genuine, good faith dispute as to whether or not the term
"postal service," was entitled to trademark protection at all.
Defendant has no registration for the phrase "postal service," but
instead relied upon related registrations for U.S. Postal Service
marks. Whether "postal service" was generic and unprotectable or
descriptive and protectable because it had acquired secondary meaning
was not a groundless or unreasonable issue. I find that the plaintiffs'
internet domain name registration for http://postal-service.com and
related marks presented a question of unsettled legality. Thus, I
cannot say that this represents and "exceptional" case to justify a fee
award.
Based upon the foregoing, I decline to exercise my discretion to award
attorney fees
in this action. Accordingly, defendant's motion for fees (#150) is
DENIED.
IT IS SO ORDERED.
DATED this 13 day of April, 2001.
Signed
Malcolm F. Marsh
United States District Judge
[unquote]
------------------------------------------------------------------------------------------------------
Please let me know if changes have been made to the WIPO documents
and/or any decision relating to Zipee Corp vs USPS.
Thanks.
HS
__________________________________________________________
WIPO Arbitration
Bad Politics
Bad Politics
If you are concerned with decisions made by WIPO you may want to read
of a case in the United States Court System, and then misquoted by WIPO
for one of their cases - and WIPO won't even fix their own errors . . .
My question is; "How many other decisions by WIPO have intellectual
property right errors that benefit the mighty and are unfair to the
weaker nations?"
Please read the WIPO response to email on factual errors . . .
__________________________________________________________
Dear Sir,
UDRP decision once notified cannot be changed.
To conduct specific research concerning UDRP decisions published on our
website, please go to http://arbiter.wipo.int/domains/search/index.html
and type under "Full Text Search" any key word you want.
Sincerely,
Annick Regard
WIPO Arbitration and Mediation Center
------------------------------------------------------------------------------------------------------
***NEW*** The WIPO Arbitration and Mediation Center Plans to Hold the
Following Events:
- WIPO Workshop for Mediators in Intellectual Property Disputes,
Geneva, June 15 and 16, 2006
- WIPO Advanced Workshop for Mediators in Intellectual Property
Disputes, Geneva, June 19 and 20, 2006
http://arbiter.wipo.int/events/workshops/2006/mediation/index.html
The WIPO Arbitration and Mediation Center is an international provider
of non-profit services for the out-of-court resolution of commercial
disputes. The Center specializes in cases arising out of technology and
intellectual property transactions, such as licensing, R&D and
distribution agreements.
WIPO arbitration and mediation contract clauses:
http://arbiter.wipo.int/arbitration/contract-clauses
WIPO Internet domain name dispute resolution:
http://arbiter.wipo.int/domains
Greetings.
Please forward to the proper department as your contact form on
wipo.int is
not functioning properly.
------------------------------------------------------------------------------------------------------
The WIPO decision found at
http://arbiter.wipo.int/domains/decisions/word/2003/d2003-0369.doc has
a problem with one of the references.
The statement in paragraph 6 "...in bad faith..." can not be accurate
as the final decision from the United States federal judge states the
following:
[quote]
Opinion and Order - United States Trademark Law
FILED
2001 April 16
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
CV 99-1290-MA
OPINION AND ORDER
ZIPEE CORP., a Washington corporation, and ZIPEE.COM, INC., an Oregon
corporation,
Plaintiffs,
v.
UNITED STATES POSTAL SERVICE,
Defendant.
Kristine Olson
United States Attorney
District of Oregon
William W. Youngman
Assistant United States Attorney
1000 S.W. Third Ave., Suite 600
Portland, OR 97204-2902
Patricia K. Norris
Keith Beauchamp
Jennifer Van Kirk
Lewis and Roca LLP
40 North Central Ave.
Phoenix, AZ 85004
Attorneys for Defendant
MARSH, Judge.
Plaintiffs originally filed this action seeking declaratory and
injunctive relief; defendant filed an answer asserting counterclaims
for federal trademark infringement under the Lanham Act, 15 U.S.C.
1114, unfair competiton under the Lanham Act, 15 U.S.C. 1125(a),
federal and state statutory dilution, 15 U.S.C. 1125(c) and Wash. Rev.
Code 19.77.160 and common law trade name infringement and unfair
competition. On December 12, 2000, I granted defendant's motion for
summary judgment on the issues of infringement and cybersquatting and
denied plaintiffs' cross-motion for summary judgment. Thereafter,
defendant requested dismissal of its remaining counter-claims. On
January 29, 2001, I entered a judgment permanently enjoining plaintiffs
and any of their associates from using the postal services' marks and I
awarded defendant its taxable costs. After entry of judgment, I granted
plaintiffs' attorneys' motion to withdraw. There has been no
substitution of counsel for plaintiffs.
Defendant now moves for attorney fees and non-taxable costs totaling
$1,183,403.22 under the Lanham Act, 15 U.S.C. 1117(a). Plaintiffs have
filed no opposition. The Lanham Act provides that a court may award
reasonable attorney fees in "exceptional cases." Although the Act fails
to define what constitutes an "exceptional" case, the Ninth Circuit has
held that a trademark case is exceptional if the infringement is
"malicious, fraudulent, deliberate or willful." Gracie v. Gracie, 217
F.3d 1060, 1068 (9th Cir. 2000). Awards are "never automatic." Rolex
Watch, USA, Inc. v. Michel Co., 179 F.3d 704, 711 (9th Cir. 1999).
The secision to award fees rests within the sound discretion of the
trial judge. Gracie, 217 F.3d at 1068. A finding of willful
infringement will support a fee award. See Id. Fees may be denied where
the legality of the activity is "unsettled," see e.g. Securacomm
Consulting, Inc. v. Securacom, Inc., 224 F.3d 273, 279 (3rd Cir. 2000),
or where the claims are "not unfounded" or brought for purposes of
harassment. See e.g. National Ass'n of Professional Baseball Leagues,
Inc. v. Very Minor Leagues, Inc., 223 F.3d 1143, 1149-50 (10th Cir.
2000).
The prevailing party bears the burden of demonstrating the exceptional
nature of the case by "clear and convincing evidence." Seven-Up Co. v.
Coca-Cola Co., 86 F.3d 1379, 1390 (5th Cir. 1996); Leatherman Tool
Group, Inc. v. Cooper Industries, Inc., 1998 WL 349554, 47 U.S.P.Q. 2d
1049, 1050 (D. Or. 1998).
Defendant contends that it is entitled to fees because plaintiffs'
infringement was willful and based upon evidence relied upon in support
of the cybersquatting counterclaim relative to plaintiffs' registration
of other internet domain names that are confusingly similar to other
businesses.
While I found infringement and cybersquatting established in this case,
there was a genuine, good faith dispute as to whether or not the term
"postal service," was entitled to trademark protection at all.
Defendant has no registration for the phrase "postal service," but
instead relied upon related registrations for U.S. Postal Service
marks. Whether "postal service" was generic and unprotectable or
descriptive and protectable because it had acquired secondary meaning
was not a groundless or unreasonable issue. I find that the plaintiffs'
internet domain name registration for http://postal-service.com and
related marks presented a question of unsettled legality. Thus, I
cannot say that this represents and "exceptional" case to justify a fee
award.
Based upon the foregoing, I decline to exercise my discretion to award
attorney fees
in this action. Accordingly, defendant's motion for fees (#150) is
DENIED.
IT IS SO ORDERED.
DATED this 13 day of April, 2001.
Signed
Malcolm F. Marsh
United States District Judge
[unquote]
------------------------------------------------------------------------------------------------------
Please let me know if changes have been made to the WIPO documents
and/or any decision relating to Zipee Corp vs USPS.
Thanks.
HS
__________________________________________________________
WIPO Arbitration
Bad Politics