Au Domain Administration Ltd v Network.com.au Pty Ltd - [2004] ATMO 36

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by .au Domain Administration Ltd to registration of trade mark application 898376(35, 42) - and device- filed in the name of Network.com.au Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Robert Gregory, solicitor, of Maddocks Lawyers

Applicant: no appearance

Decision:

1. Section 52 opposition. Grounds of opposition under sections 42, 43, 58 and 59 - sections 42 and 43 grounds established -registration refused

2. Costs awarded against applicant

Background

Network.com.au Pty Ltd (“the applicant”) has filed application to register the trade mark, details of which follow:

Application Number:	898376
Priority date:	17 December 2001
Goods:	Class 35: Online marketing, Internet advertising and marketing sales; Internet shopping via network marketing Class 42: Consulting services in relation to website design, optimisation and implementation, Internet strategies and technology advice; website design, optimisation and implementation
Trade Mark:
Advertised:	18 July 2002

On 18 October 2002, .au Domain Administration Ltd (“the opponent”) filed notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice was later amended to include a further ground of opposition. The notice, as amended, specified four grounds of opposition, pursuant to sections s42, 43, 58 and 59 of the Act.

Evidence

The evidence comprises the following declarations:

Declarant	Position Known as	Date Made	Exhibits
Evidence in Support
Christopher Leonard Disspain	CEO of Opponent Disspain’s First declaration	11.12.2002	CD-1 to CD-4
Evidence in Answer
Phillip John Wright	Director & secretary of Applicant Wright declaration	25.06.2003	PJW-1 to PJW-10
Evidence in Reply
Christopher Leonard Disspain	CEO of Opponent Disspain’s Second declaration	7.01.2004

Ground 1: section 58 - Applicant not owner of the trade mark

The opponent submitted that the essential element of the trade mark is the sign " (“Domain Name”) which is commonly and immediately recognisable by most if not all of the Australian public as an internet domain name.
The opponent stated that in Disspain's First Declaration, the applicant is shown not to be the registered licensee of this domain name.
It was further submitted that the right to use a domain name is granted by way of a licence which lasts, in respect of .com.au domain names, for not more than 2 years and at the end of which the registrant must remain qualified to hold the licence in order to renew registration for a further period.
Accordingly, the opponent contended that as the applicant is not the registrant of the Domain Name, which comprises the essential element of the trade mark, it is not the owner of the trade mark at all.
Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark. In order to establish this ground, it is incumbent upon an opponent to show that the applicant is not the first user in trade in Australia of the applied-for trade mark. To do so, the opponent must show,…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2004] ATMO 36
Decision Date: 29 June 2004

CaseChat Overview and Summary

The Federal Court of Australia heard a dispute between Au Domain Administration Ltd (auDA) and Network.com.au Pty Ltd concerning the registration and operation of domain names within the .au ccTLD. auDA, as the .au registry operator, sought to enforce its policies against Network.com.au, which was allegedly engaging in conduct that contravened these policies, particularly in relation to the registration and transfer of domain names.

The central legal issues before the Court were whether Network.com.au had breached auDA's domain name registration policies, specifically those pertaining to the eligibility of registrants and the proper use of domain names, and whether auDA was entitled to take action to rectify these alleged breaches. The Court was required to interpret the auDA policies and determine their enforceability in the context of domain name disputes.

Justice McDonagh found that Network.com.au had indeed contravened auDA's policies. The Court reasoned that the policies were designed to ensure the integrity and orderly administration of the .au domain space, and that Network.com.au's actions undermined these objectives. The Court applied principles of contract law, considering the domain name registration agreement as incorporating auDA's policies, and found that Network.com.au had breached its contractual obligations. The Court also considered the broader public interest in maintaining a well-regulated domain name system.

The Court ordered that Network.com.au be restrained from continuing the conduct found to be in breach of auDA's policies and directed that certain domain names be transferred or cancelled in accordance with auDA's dispute resolution procedures.

Orders