Consolidation of multiple complainants clarified in novel decision

In National Dial A Word Registry Pty Ltd v 1300 Directory Pty Ltd (Case DAU2008-0021, March 6 2009), a World Intellectual Property Organization panel has addressed a novel procedural issue in a domain name dispute involving nine complainants and one respondent.
The complainants were National Dial A Word Registry Pty Ltd, Phone Name Marketing Australia Pty Ltd, Premier Telecommunications Pty Ltd,  Words Work Pty Ltd, Excel Phone Words Pty Ltd, Easy Dial Pty Ltd, Wentworth Enterprises International Pty Ltd, 1300 Australia Pty Ltd and Inbound Telecommunications Pty Ltd. The respondent was 1300 Directory Pty Ltd.
The complaint related to 66 domain names which all begin with the numbers 13, 1300 or 1800 (eg, '', '' and '').

The complainants claimed to have individual rights in various 'smartnumbers'. A smartnumber is a telephone number allocated through an auction process conducted by the Australian Communications and Media Authority. A smartnumber is either a freephone or local rate phone number. A 'freephone' number is a 10-digit number beginning with 1800. A local rate phone number is either a 10-digit number beginning with 1300 or a six-digit number beginning with 13. Desirable smartnumbers are either those that are highly memorable (eg, 1800 222 222) or those that translate to a 'phoneword' (eg, 13 2287 translates to '13 CATS' when the suffix numbers are mapped to the letters on a telephone keypad).

The smartnumbers in respect of which the complainants claimed to have rights were phonewords. For example, 1300 Australia Pty Ltd claimed to have rights in the smartnumber 13 2277, which translates into the phoneword '13 CARS'. The domain names that were the subject of this complaint took the form of the complainant’s phonewords (with the addition of the suffix ''). For example, one of the domain names was ''.

Each complainant filed the complaint in its individual capacity. Neither of them had any corporate relationship to each other or had any joint interest in the phonewords.

The only issue addressed by the panel in its decision was the respondent’s argument that the '.au' Dispute Resolution Policy does not provide for multiple complainants that each have separate interests in the domain names which are the subject of a single complaint. The panel noted that “[t]he form of this complaint raises a novel and important procedural issue: whether a single complaint may be filed against a single respondent by multiple complainants”.

Although the policy make express provision permitting consolidation of disputes in relation to multiple domain names (ie, disputes between the same complainant and respondent in relation to multiple domain names), it does not make express provision permitting consolidation of multiple complainants (or, for that matter, any other type of consolidation involving multiple parties). However, the policy does not expressly prohibit consolidation of multiple complainants. The panel thus had to consider whether, as a matter of principle, a complainant must be a single legal person or entity or can consist of multiple legal persons or entities.
The panel expressed the view that it should be possible for a single complaint to be brought by multiple complainants, but only where the multiple complainants have a “common grievance” against the respondent - for example, where the multiple complainants have a “common legal interest” in a relevant right or rights that are allegedly affected by the respondent’s conduct, or where the multiple complainants are the target of “common conduct” by the respondent.
However, the panel stated that where the multiple complainants do not have a shared interest in the relevant rights and do not exist within an overarching legal structure, but rather rely on an assertion of rights that is claimed by each as an individual legal entity on an individual basis, it was “unlikely” that the complainants would be able to show that they had a common legal interest that justified their consolidation in a single complaint. In that case, the onus would fall on the complainants to make a compelling case that the respondent had engaged in "common conduct" that had affected their individual rights in like fashion. Examples of this might include cases where:

  • a respondent clearly targeted multiple rights holders;
  • the rights relied on and all of the domain names complained about involved certain obvious and specific commonalities; and
  • there appeared to be a clear pattern to the registration and use of all disputed domain names.
In the present case, the panel concluded that:
  • the complainants did not have a common legal interest affected by the conduct of the respondent; and
  • the respondent did not appear to have engaged in common conduct against the complainants.
Thus, the panel took the view that the complainants did not have a truly common grievance against the respondent that permitted consolidation. Further, the panel concluded that, in the circumstances, it would not be procedurally efficient - and, therefore, not equitable - to permit consolidation.

The panel expressly noted that the issue of consolidation is relatively “uncharted territory” and that there may be further development of the issues having regard to the need to take account of, and do justice to, the “changing realities within the broader domain name system, and the intent behind the policy which is to provide an effective means of addressing abusive domain name registration”.

It will be interesting to see what action(s) the complainants subsequently take individually against the respondent, either under the policy or in the courts.
Julian Gyngell, Julian Gyngell, Wahroonga

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