Macquarie Bank and serial cybersquatter go around again
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.
The respondent had several ‘personal hall marks’ (as opposed to trade marks) which remain consistent through all proceedings:
- The respondent engaged in a pattern of registering domain names containing the names (exact, misspelled, variants and permutations) of Macquarie Bank and Oxford University. In more formal terms these are well-known entities which he had no right or interest in, with the intention of using the domain names in bad faith, particularly to gain profit, hence the term ‘cybersquatting’;
- He would always fail to respond to the applicant’s contentions and to attend hearings;
- The respondent repeatedly engaged in cybersquatting conduct in relation to Macquarie Bank (and, before that, Oxford University).
In past proceedings, the Courts would always apply one or more of the following remedies (these are the most common remedies used, but the list is not exhaustive):
- Grant relief to the applicant pursuant to Order 35A Rule 3 (2)(c) of the Rules;
- Restrain the respondent, his servants or agents from engaging in misleading and deceptive conduct pursuant to s 52 of the Trade Practices Act 1974 (Cth) by maintaining, registering or using the domain name(s) in dispute (ie: in that respect it followed CSR Ltd v. Resource Capital Australia Pty Ltd (2003) 128 FCR 408; [2003] FCA 279 but did not make the ‘direction’ made in that case that the applicant submit a statutory declaration that he is not aware of any similar domain name when applying for a domain name);
- Set a deadline for the respondent to execute documents to transfer the domain name(s) in dispute to the applicant;
- Order costs of the application to be paid by the respondent.
If the proceeding was heard by WIPO Arbitration and Mediation Centre, the only remedy permitted by the ICANN’s Uniform Dispute Resolution Policy (UDRP) is to request cancellation or transfer of the domain name in dispute to the applicant.
Held
The Court held for the applicants and made orders and remedies similar to those made by other judges and the WIPO Arbitration and Mediation Centre. The orders empowered the Registrar of the Court to execute any requisite transfer documents if the respondent failed to do so within 21 days, and ‘permanently restrained’ (rather than just ‘restrained’) the respondent from registering, maintaining or using the domain name(s) in dispute.
The Court declined to strip Mr Seagle of the domains: honourmission.com, federal-court.net, mypute.com, terrorismsupport.com, arrogantsa.com, BDWaldron.com, I-C-A-C.com, may-day.biz, response-continues.biz and muckworry.com but ordered that he remove certain commentary from websites at these addresses.
The Court also declined the applicants proposal to have the respondent declared a ‘vexatious domain name registrant’ to prevent him from registering any domain name without the leave of the court, Jagot, J., stating [at 27]:
“Although the evidence establishes that the respondent has repeatedly engaged in the registration of misleading and deceptive domain names, the context is not the same as a vexatious litigant order. Vexatious litigant orders are specifically authorised by rules of courts (for example, Order 21 of the Federal Court Rules). [The p]roposed order …goes further than I consider necessary to vindicate and protect the applicants’ rights. I also consider that the presence of material about the Court on the websites in dispute is a separate matter and immaterial to the applicants’ claims (despite the apparent cause of the respondent’s publication of that material being the applicants’ proceedings against the respondent). For these reasons I will not make [the] proposed order.”
So what?
The case marks a new high water level in cybersquatter jurisprudence, but exposes the weaknesses of remedies available to deal with the future conduct of a determined cybersquatter. In WIPO decision 2003-0374, Mr Seagle asserted that he had changed his name from “Oxford University” to “Macquarie Bank” and attempted to secure employment with the bank to secure transfer of the domain. (Taking over a monopoly asset probably qualified him to work there, but, strangely, they declined to give him a job). Part of the evidence in the 2005 Federal Court proceeding was that Mr Seagle had registered the domain accesseconomics.com and someone from Macquarie sent confidential tender documents to an email address at that domain which he then published on the internet.
Both WIPO and Court proceedings has consistently failed to deter someone apparently prepared to change his name by deed poll to “Mr. Macquarie Westpac Bank” from further, creative anti-Macquarie Bank conduct. No doubt, the bank has bigger problems at the moment, but trade marks law, trade practices law and the UDRP and auDRP Rules are blunt objects to prevent future conduct outside the four walls of the orders the Court has so far been comfortable to make. Will “Mr. Macquarie Westpac Bank” return? We shall wait and see.
