Speedo obtains wide-ranging orders to shut down salacious websites

Australia

In Speedo Holdings BV v Evans (No 2) ([2011] FCA 1227, November 3 2011), the Federal Court of Australia has granted default judgment and wide-ranging orders in favour of the well-known Australian swimwear brand Speedo, restraining a blogger known as 'aussiespeedoguy' from operating salacious websites at domain names containing the name Speedo and ordering that he transfer the infringing domain names to the applicants.

The applicants, Speedo Holdings BV and Speedo International Limited, manufacture, distribute and sell swimwear in Australia and overseas under the trademark SPEEDO. Speedo Holdings is the registered owner of over 30 Australian trademarks.

In August 2011 the applicants filed an originating application and a statement of claim in the court, alleging that the respondent, Dave Evans, had registered five domain names containing the Speedo name without the applicants' consent, and used them to operate commercial websites featuring offensive and pornographic content and images of people wearing Speedo swimwear. The applicants alleged that the domain names infringed the registered SPEEDO marks under Section 120(1) of the Trademarks Act 1995 (Cth), as they were substantially identical or deceptively similar to the registered marks. The applicants further alleged unlawful passing off and misleading and deceptive conduct.

Evans failed to enter an appearance and file a defence or any affidavit evidence. The applicants made an application seeking default judgment under Rule 5.23(2)(c) of the Federal Court Rules 2011, which allows an applicant to apply for an order giving judgment against the respondent for the relief claimed when the respondent is in default and the court is satisfied of the entitlement to relief.

In discussing the application of Rule 5.23(2)(c), the court set out the following relevant principles:

  • The court's power to order default judgment is discretionary, should be exercised with caution and only if appropriate in the interests of justice.
  • The applicant need not prove the claim sought. Rather, the court must be satisfied that relief is available on the pleading's face after determining whether each element of the cause of action is properly pleaded.
  • Depending on the nature of the case, the court may accept limited further evidence, such as supplementary affidavit evidence, so long as it does not alter the pleaded case.

The court found that there was no doubt that Evans was in default, as he had failed to attend court and to file a defence within the period prescribed or extended by order. Further, the court found that the facts in the statement of claim established the existence of well-known registered marks and their infringement by substantially identical or deceptively similar marks, as required under the act, and made out the elements of the tort of passing off and misleading and deceptive conduct under the recently repealed Trade Practices Act 1974 (Cth) and newly enacted Australian Consumer Law (Cth).

The court thus concluded that the applicants were entitled to the relief claimed. The court held that its discretion to grant relief was appropriate, as Evans had repeatedly declined to provide details as to his identity or address, and his conduct established that he had no intention of actively defending the case or complying with orders. Reasons advanced on Evan's blog for not appearing in court were held to be without substance. The order would thus not be shutting out a respondent who genuinely wished to be heard. The court held that such additional evidence was admissible as it went towards the exercise of the court's discretion.

The court ordered that:

  • Evans be restrained from infringing the SPEEDO marks and registering any domain name containing the name Speedo or any substantially identical or deceptively similar names;
  • Evans be restrained from operating any website at such a domain name which features persons wearing swimwear and related offensive content;
  • Evans transfer to the applicants the registration of the infringing domain names and any other domain names meeting the above description within 21 days;
  • a court registrar carry out the transfer if Evans failed to comply; and
  • there be an inquiry into damages suffered or profits made, and that Evans pay to the applicants any amount determined.

Lisa Ritson and Leah Jessup, Blake Dawson, Sydney

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