Australian Trade Marks Law Blog : Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

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The writer has been attending the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Center’s two workshops in Geneva over the past week, one on Arbitration and the other an “Advanced Workshop on Domain Name Dispute Resolution”. It is from the latter that I shamelessly crib the statistics carefully compiled by the Center’s Erik Wilbers and David Roache-Turner (the latter an Australian national).

Nearly 170 million domain names have been registered to date. Nearly 110 million of these are in the United States of America. Some U.S. citizens are known to love a barney.

The Centre (in Australian English) is the original ICANN-accredited provider of domain name dispute resolution services. It has received more than 14,000 cases for gTLD’s (Global Top Level Domains, such as .com) and ccTLD’s (Country Code Top Level Domains, such as .com.au) since 1999, covering more than 25,000 disputed domain names. As at 21 October 2008, 1843 cases had been filed with the Centre this year, averaging 6 new cases each calendar day. The Centre acts as a case manager and secretariat, using staff (most of whom are lawyers) from 25 nations with skills in 17 languages.

Naturally the United States of America tops the lists of Complainant and Respondent countries, with 44.16% and 39.76% of those filed, respectively. Australia finishes 9^th on the list of Complainant countries, filing only 257 cases since 1999 or 1.82% of the total. In Respondent filings, Australia did a little better and is presently ranked 8^th, apparently annoying a Complainant somewhere in 338 cases, or 2.39% of the total filings. Surprisingly, it seems that Australians are far more annoying than New Zealanders, who are ranked 25^th on the list with only 0.5% of Respondent filings against them. There is a lower level of economic activity in New Zealand due to its smaller population but, per capita, they still appear to be less annoying, which is anomalous empirically.

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In Two Men and A Truck Aust Pty Ltd v Three Men & A Truck Removals and Storage Pty Ltd & Anor [2008] FMCA 1333 (26 September 2008) [2008] FMCA 1333 the applicant, Two Men And A Truck Australia Pty Limited (Two Men And A Truck), has two Australian Registered Trade Marks, with a priority date of 3 April 2003 in class 39 for: “Transportation, packing and storage of goods including removalist services; transportation and storage of waste including rubbish removal; rental of storage containers”.  One is word mark No. 949361 for “TWO MEN AND A TRUCK” and the other, No. 949362, comprises the following device:

On 11 May 2007 the first respondent adopted the corporate name Three Men & A Truck Removals And Storage Pty Ltd (Three Men & A Truck) and placed an advertisement in the print edition of the Sydney Yellow Pages under the name or trade mark “Three Men & A Truck Removals and Storage Pty Ltd” in the category “Furniture Removals & Storage” as well as printed, issued and used business cards with the following representation of a truck:

Two Men And A Truck alleged that, by doing so, Three Men & A Truck engaged in conduct that was misleading or deceptive or likely to mislead or deceive in contravention of s.52 of the Trade Practices Act 1974 (Cth) and made false representations in contravention of s.53(c) of the Trade Practices Act,  passed off or attempted to pass off its services as having a connection with the applicant or its business and infringed the registered trade marks of the applicant under s.120 of the Trade Marks Act 1995 (Cth).

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 In Macquarie Bank Limited (ACN 008 583 542) and Another v. David Seagle [2008] FCA 1417(19 September 2008), the presiding Justice Jagot of the Federal Court in Sydney (unsurprisingly) held in favour of the applicants, a well-known Bank in Australia against the respondent, David Seagle, aka “Mr. Macquarie Westpac Bank”.

Macquarie had made an application for default judgement pursuant to Order 35A rule 3(2)(c) of the Federal Court Rules (Rules). The applicant had also successfully brought, inter alia, claims against the respondent under s. 52 of the Trade Practices Act 1974 (Cth) for engaging in misleading and deceptive conduct.

The respondent is a notorious cybersquatter in the Australian ‘domain name’ and intellectual property sector who has ‘priors’ for similar disputes in the Federal Court. There are a number of WIPO Arbitration and Mediation Centre Administrative Panel Decisions against him, for example see: Macquarie Bank Limited v Seagle [2005] FCA 1239 (15 August 2005) and the WIPO decision Westpac Banking Corporation v Sir Oxford University aka David Seagle Doc Seagle and Mr Oxford University WIPO Case No. D2003-0250. See also WIPO cases D2003-0374 and D2003-0890 (where Seagle was ordered to transfer the domain names macquarie-bank.com and macquariebank.net to the bank), Harvey Norman Retailing Pty Ltd v Oxford University, WIPO Case No. D2000-0944, The Chancellor, Masters and Scholars of the University of Oxford v DR Seagle t/a Mr. Oxford University, WIPO Case No. D2001-0746 and Imperial Chemical Industries PLC v. Oxford University, WIPO Case No. D2001-0292. There are others and I cannot be bothered, but somehow Mr Seagle can.