[Gnso-igo-ingo-crp] Two cases where IGOs filed trademark lawsuits in the USA

[Paul@law.es ZIMBRA]

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 at 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>
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