Star Grill Potts Point Pty Ltd v Valeba Pty Ltd

[2009] FMCA 295

FEDERAL MAGISTRATES COURT OF AUSTRALIA

STAR GRILL POTTS POINT PTY LTD  v VALEBA PTY LTD & ANOR [2009] FMCA 295

TRADE PRACTICES – Ex parte application for injunctive relief – where dispute over ownership of domain name used in connection with business of applicant – where proposed sale of domain name by respondents likely to breach Trade Practices Act.

Applicant: STAR GRILL POTTS POINT PTY LTD

First Respondent: VALEBA PTY LTD

Second Respondent: MARK RICHARD DONKIN

File Number: SYG 764 of 2009

Judgment of: Raphael FM

Hearing date: 1 April 2009

Date of Last Submission: 1 April 2009

Delivered at: Sydney

Delivered on: 1 April 2009

REPRESENTATION

Counsel for the Applicant: Mr M Hall

Solicitors for the Applicant: Banki Haddock Fiora

ORDERS

Upon hearing Mr Hall for the Applicant and upon reading the affidavit of Julie Robb affirmed 1 April 2009 and upon the Applicant by its counsel undertaking to the Court that it will submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the interlocutory order or undertaking or any continuation (with or without variation) thereof; and to pay such compensation to that person;

And to file in the Registry an Application in the form initialled by me and the Affidavit of Julie Robb sworn 1 April 2009:

1. Each of the Respondents be restrained until further order of the Court, including by their servants and agents, or through their related corporations of which the Second Respondent is a director, shareholder, or employee, from:

   (i)Interfering with or interrupting or diverting access to or use of the Applicant’s website being the website that currently appears at the address with, interrupting, diverting or breaking the link between the domain name and the Applicant’s website;

   (iii)Transferring the registration of the domain name (other than to the Applicant);

   (iv)Selling, advertising or offering for sale the domain name or

   (v)Interfering with, accessing or reading email messages sent from or to the Applicant’s website, or from or to any address in the rockpool.com or rockpool.com.au domains, except email messages addressed to the Second Respondent.

2. Direct that this Order be entered and taken out immediately.

3. Abridge the time for service of the Application to 4 pm on 2 April 2009.

4. Direct that the Application be returnable before Raphael FM at 9.30 am on 6 April 2009.

FEDERAL MAGISTRATES
COURT OF AUSTRALIA AT
SYDNEY

SYG 764 of 2009

STAR GRILL POTTS POINT PTY LTD

Applicant

And

VALEBA PTY LTD

First Respondent

MARK RICHARD DONKIN

Second Respondent

REASONS FOR JUDGMENT

1. In this matter I have been approached urgently by counsel for the applicant, Star Grill Potts Point Pty Ltd, who it is said, has an interest in the businesses run under the name Rockpool in Sydney, Melbourne and the United Kingdom.  The applicant is the owner of a number of domain names associated with the Rockpool business, including rockpool.com.au.  Although these domain names are used by the applicant in connection with the Rockpool business, there is an additional domain name, rockpool.com, which is also used in association with the business and which, according to the affidavit of Julie Robb affirmed on 1 April 2009, has a large number of what are known as “hits” from persons interested in doing business with the Rockpool enterprises. 

2. This latter domain name is held by the first respondent under what are disputed circumstances.  It appears that recently the first respondent has done two things which have caused the applicants concern in relation to the domain name.  First, it has transferred the host or registrar of the domain name to a company known as Domains By Proxy Inc which appears to be a business set up in order to hide the identity of persons who claim to be the owners of domain names.  Second, the respondents have put up the domain name rockpool.com for sale.  Third, there is a strong suspicion, as deposed to in the affidavit, that the respondents have been intercepting communication addressed to persons at the rockpool.com domain name not intended for them. 

3. It should be made clear that it is feasible and possibly even common for the owners of domain names and the operators of the enterprises which use the domain names not to be the same. 

4. The sale of a domain name so closely associated with the Rockpool businesses would, to my mind, have the effect of creating a circumstance in which a breach of the Trade Practices Act was likely to occur.  This would give the court jurisdiction to deal with the matter, including whatever associated jurisdiction may be necessary to prevent what may, in the end, be breaches of the applicant's trademarks of which there are several utilising the word “Rockpool”. 

5. This application, which seeks injunctive relief ex parte against the respondents preventing them from interfering with or diverting access to the applicant's website, that is, access by utilising the domain name in contention, and preventing any immediate sale of the domain name, is brought late on a Wednesday evening.  Having considered the affidavit, I am of the view that the balance of convenience currently weighs in favour of the applicants; for it would be an unnecessarily messy process if some sale took place speedily and had to be undone.  It is also a concern to me that correspondence between third parties and persons whose email addresses are connected to the domain name might be interfered with or read by the respondents. 

6. In these circumstances, I propose to give the injunctions requested, subject of course to the undertaking as to damages contained in the draft order.   I would propose that the matter be brought back before me at 9.30 am on 6 April 2009 and hope that in the meantime the parties may be able to go some way, if not all the way, to resolving what appears to be a regrettable dispute.  I make orders in accordance with the document entitled “Order” amended by me in “black cherry” in place of the papers. 

I certify that the preceding six (6) paragraphs are a true copy of the reasons for judgment of Raphael FM

Associate: 

Date:  6 April 2009