Rare domain name case heard by Federal Court
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In Macquarie Bank Limited v Seagle ( FCA 1417, September 19 2008), the Federal Court of Australia has held in favour of Macquarie Bank Limited, a well-known Bank in Australia, against the respondent, David Seagle.
One of the very few domain name-related cases which have come before the Australian courts, Macquarie has a long and complex history. Macquarie is a large Australian merchant bank. Seagle had been in dispute with the bank for several years over issues of deceptive and misleading conduct, copyright infringement, confidential information, breach of contract and cybersquatting. In 2003 World Intellectual Property Organization decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) resulted in the transfer to Macquarie of the domain names 'macquarie-bank.com' (Case D2003-0374) and 'macquarie-bank.net' (Case D2003-0890).
Notwithstanding the entry of the parties into a deed of settlement in November 2003, the matter came before the Federal Court in 2005 (see Macquarie Bank Limited v Seagle ( FCA 1239)). The case concerned:
- the registration and use by Seagle of the domain name 'accesseconomics.com' to obtain copies of confidential emails between Macquarie and Access Economics Pty Ltd; and
- the subsequent publication of that material on various websites controlled by Seagle.
Seagle did not comply with procedural orders of the court and did not attend the hearing. The court granted the application on the pleadings under Rule 3(2)(c) of the Federal Court Rules. The court ordered that Seagle be restrained from:
- maintaining the 'accesseconomics.com' domain name or any name deceptively similar thereto; and
- using or publishing Macquarie's confidential information and copyright material.
Seagle persisted in his activities both in his own name and under a number of aliases, including 'Lord Oxford' and 'Oxford University'. He registered nine domain names consisting of or including the word 'Macquarie' and various misspellings thereof, and directed them to websites incorporating sponsored links. He also posted material damaging to Macquarie at two other websites (including one at the domain name 'federal-court-net'). Once again, the court noted that Seagle had been subject to UDRP proceedings for domain names including the words 'Oxford', 'Texas Instrument', 'Imperial Chemical Industries', 'Imperial College of Science' and 'Westpac Banking Corporation'.
Again Seagle did not comply with the court orders or appear at the hearing, and the court granted orders on the pleadings. It therefore came as no surprise that Macquarie, for the most part, obtained the orders that it sought. Among other things, the court ordered that:
- Seagle transfer the domain names to Macquarie;
- failing execution of the transfers by Seagle, the registrar of the court be empowered to do so;
- Seagle be restrained from registering or maintaining any domain names including the word 'Macquarie' or any misspelling, variant or permutation thereof;
- Seagle remove the damaging material from the websites controlled by him; and
- costs be ordered in a lump sum of A$38,000 (Macquarie did not seek full costs in view of the trouble and expense of taxation and the unlikelihood of recovery).
The case is an exceptional one, even though the facts were uncontested and the domain name issues were clear-cut. It illustrates wider remedies available in proceedings in the Federal Court compared with those under the UDRP, where orders in respect of future registrations and taking down of materials could not have been obtained.
Des Ryan, Davies Collison Cave, Melbourne
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