Ariix LLC v Mahilall (No 2)

Link copied
Case Copied 12 min read

FEDERAL COURT OF AUSTRALIA

Ariix LLC v Mahilall (No 2) [2014] FCA 494

Citation: Ariix LLC v Mahilall (No 2) [2014] FCA 494
Parties: ARIIX LLC v DHANEEL MAHILALL
File number: NSD 1370 of 2013
Judge: RARES J
Date of judgment: 4 April 2014
Date of final orders: 16 April 2014
Cases cited: Ariix LLC v Mahilall [2014] FCA 429 referred to
Colgate-Palmolive Company v Cussons Pty Limited (1993) 46 FCR 225 applied
Hamod v The State of New South Wales [2011] NSWCA 375 applied
Sony Entertainment (Australia) Limited v Smith (2005) 215 ALR 788 referred to
Wentworth v Rogers (No 5) (1986) 6 NSWLR 534 referred to
Date of hearing: 4 April 2014
Date of last submissions: 8 April 2014
Place: Sydney
Division: GENERAL DIVISION
Category: No catchwords
Number of paragraphs: 15
Counsel for the Applicant: Ms K Morgan
Solicitor for the Applicant: Henry Davis York
Counsel for the Respondent: The respondent appeared in person

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1370 of 2013
BETWEEN:

ARIIX LLC
Applicant
AND:

DHANEEL MAHILALL
Respondent

JUDGE:

RARES J

DATE OF ORDER:

16 APRIL 2014

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.The respondent by himself, his servants and agents be restrained from using or causing to be used as part of a domain name the “Ariix” name or any other name, word or mark substantially identical with or misleadingly, deceptively or confusingly similar thereto.

2.The respondent, by himself, his servants and agents be restrained from using or causing to be used any email address using in part the name “Ariix”, including “@ariixcorporate.com” or any other name, word or mark substantially identical with or misleadingly, deceptively or confusingly similar thereto.

3.The respondent, by himself, his servants and agents be restrained from attempting to intimidate or extort the applicant.

4.The respondent, by himself, his servants and agents be restrained from causing to be made public (including via the internet) any false or misleading statement, commentary or video concerning the applicant.

5.The respondent, by himself, his servants and agents be restrained from causing to be made public (including via the internet) any false or misleading statement, commentary or video concerning any person insofar as that statement, commentary or video refers to or associates that person with the applicant.

6.The respondent, by himself, his servants and agents be restrained from emailing, messaging or telephoning any false or misleading statement to any person (excluding any lawyer advising or representing the respondent) concerning the applicant.

7.On or before 24 April 2014, the applicant provide the respondent with the Domain Transfer of Ownership form for the respondent to sign in order to assign to the applicant all legal and equitable rights the respondent holds to the domain name ‘ and email addresses using “@ariixcorporate.com”.

8.The respondent, within 7 days of being provided with the Domain Transfer of Ownership form pursuant to order 7, sign that document and provide the original document so signed to the applicant.

9.The respondent sign, and provide…

CaseChat AU logo

Keep reading for free

Create a free CaseChat account to read Ariix LLC v Mahilall (No 2) and more:

  • Read every judgment in full
  • Ask AI and get answers linked to paragraphs
  • See how each paragraph was cited in later cases
  • Download judgments as PDF or Word
Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details
Case
[2014] FCA 494
Decision Date

CaseChat Overview and Summary

In the case of Ariix LLC v Mahilall, the applicant sought an extension of time to transfer a domain name and the imposition of indemnity costs against the respondent. The matter was heard in the Federal Circuit Court of Australia. The applicant, Ariix LLC, made an amended claim for the respondent to pay its costs on an indemnity basis, following earlier proceedings where the respondent had been found liable for passing off and cybersquatting. The respondent opposed the application for costs, arguing that the amount sought was excessive and that Ariix had not provided reasonable offers of compromise.

The legal issues before the court included whether the time for compliance with the transfer of the domain name should be extended and whether the applicant was entitled to indemnity costs in the amount of $140,000. The respondent contended that the proposed timeframe for the transfer was impractical and that the application for indemnity costs was inappropriate due to the size of the amount sought and the lack of reasonable offers of compromise. The court needed to consider the respondent’s arguments and determine whether the draft orders proposed by Ariix should be modified or if the application for indemnity costs should be granted in full, reduced, or denied.

The court accepted the respondent’s submission that there might be difficulties with the form of the draft order for the domain name assignment. It proposed that Ariix should provide the necessary documents for the assignment within seven days, with the respondent having a further seven days to execute and return those documents. This mechanism would allow for the assignment to proceed effectively if the respondent failed to comply within the stipulated time. Regarding the indemnity costs, the court did not accept the respondent's arguments that the amount sought was excessive or that Ariix had failed to make reasonable offers of compromise. The court found that the application for indemnity costs should be granted in full.

In conclusion, the court ordered that the respondent must provide the necessary documents for the domain name assignment within seven days, with an additional seven days for the respondent to execute and return those documents. The court also ordered that the respondent pay the applicant’s costs of the proceeding, including the indemnity costs, in the amount of $140,000.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

In the event, the respondent sent an email early this morning late last night with an apology that he would not be able to be at Court today because he feared his employment would be terminated if he was absent for another day following the four-day hearing last week. The respondent has not appeared today, as he foreshadowed. However, he made detailed submissions in response to the two matters above in the draft orders proposed by Ariix.Background Ariix’ amended originating application, filed on 30 August 2013, made a claim that the respondent pay its costs of its earlier urgent application before the start of proceedings and of these proceedings on an indemnity basis. That claim has been persisted in throughout. Mr Neilson’s evidence on costs was that Ariix had incurred counsel’s fees of approximately $48,000, court fees of approximately $18,000, and transcript fees of approximately $6,000, as well as its solicitors’ professional fees of approximately $170,000 together with miscellaneous disbursements of about $3,000 totalling, without including today’s hearing, about $245,000. These sums are GST free because Ariix is located in the United States. The basis of that calculation of indemnity costs assessed at $140,000 is that Ariix seeks full recoupment of its disbursements for counsel’s fees, court fees, and transcript fees without discount, and does not seek to recover any of the other disbursements. It seeks only 40% of the professional solicitor/client fees of its solicitors.The respondent’s submissions First, the respondent contended that the time for compliance with Ariix’ draft order for the transfer of the domain name should be extended to 28 days. He said that there were difficulties with having Crazy Domains, the operator of the domain name site, deal with such matters timeously. Secondly, he also opposed the application for indemnity costs fixed at $140,000. The respondent argued that, because he was self-represented, he was unfamiliar with the procedures of the Court and had no legal advice in how to approach the matter. He contended that Ariix’ commencement and continuation of the proceedings in this Court was not warranted, and that it should have brought them in a lower court, particularly having regard to my award of $20,000 damages. He argued that Ariix’ application for indemnity costs fixed at $140,000 was not appropriate on the bases that, first, the amount sought was too large, and secondly, Mr Neilson’s evidence of his discussion with a cost consultant that it would cost approximately $10,000 for her to prepare a bill of costs in taxable form was unreasonable, and that other quotes should have been obtained. He argued that, even though he did not think that his case was weak, mere weakness of a case was not sufficient to ground indemnity costs, and referred to Wentworth v Rogers (No 5) (1986) 6 NSWLR 534. He asserted that Ariix had not made any appropriate offers of compromise and that “[a]ll offers came with the farcical request to ‘apologise’”. He also contended that that was no offer of compromise, but only “a trap to admit guilt”. He asserted that Ariix had only itself to blame and should not be blaming him. He claimed that he was not aware that Ariix would apply for indemnity costs if its offers were not accepted and that Ariix had not offered any reasonable compromise.Consideration

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Secondly, he also opposed the application for indemnity costs fixed at $140,000. The respondent argued that, because he was self-represented, he was unfamiliar with the procedures of the Court and had no legal advice in how to approach the matter. He contended that Ariix’ commencement and continuation of the proceedings in this Court was not warranted, and that it should have brought them in a lower court, particularly having regard to my award of $20,000 damages. He argued that Ariix’ application for indemnity costs fixed at $140,000 was not appropriate on the bases that, first, the amount sought was too large, and secondly, Mr Neilson’s evidence of his discussion with a cost consultant that it would cost approximately $10,000 for her to prepare a bill of costs in taxable form was unreasonable, and that other quotes should have been obtained. He argued that, even though he did not think that his case was weak, mere weakness of a case was not sufficient to ground indemnity costs, and referred to Wentworth v Rogers (No 5) (1986) 6 NSWLR 534. He asserted that Ariix had not made any appropriate offers of compromise and that “[a]ll offers came with the farcical request to ‘apologise’”. He also contended that that was no offer of compromise, but only “a trap to admit guilt”. He asserted that Ariix had only itself to blame and should not be blaming him. He claimed that he was not aware that Ariix would apply for indemnity costs if its offers were not accepted and that Ariix had not offered any reasonable compromise.Consideration I accept the respondent’s submission that there may be difficulties with the form of the draft order provided in Ariix’ suggested orders for the assignment of the domain name. I consider that the way in which such an assignment should be progressed is by Ariix providing to the respondent whatever relevant document or documents are necessary to bring about the assignment it seeks within seven days and that he have a further seven days to execute and return those documents to Ariix, or to take what other appropriate step is necessary. That mechanism will need to be specified in the final form of the order to be proposed by Ariix to give effect to these reasons. If the time for compliance with such an order has expired, and the respondent has not taken all steps necessary to allow Ariix to become registered as owner, proprietor, or registrant of the domain name, there will then be a clear basis on which the registrar will be able to execute whatever document is necessary and take whatever other steps are necessary in the respondent’s name to bring about that result. In my opinion, the other draft orders proposed by Ariix are appropriate. In brief, they are that the respondent be restrained from, first, using the word “Ariix”, including in any domain name or email address, secondly, attempting to intimidate or extort Ariix, thirdly, causing to be made public, including via the internet, any false or misleading statement, commentary, or video concerning Ariix or concerning any person so far as that refers to or associates the person with Ariix, fourthly, emailing, messaging, or telephoning any false or misleading statement concerning Ariix to any person, excluding a lawyer advising or representing him.