FCA 1226
In this case, the applicants sought certain declaratory and other relief which was, in substance, an application to the Federal Court to overturn orders made by the World Intellectual Property Organization (WIPO) in relation to a dispute in connection with the domain name “cars24.com.au” (Domain Name). The respondents challenged the jurisdiction of the Federal Court to grant the relief sought by the applicants, and filed an interlocutory application seeking dismissal of the proceeding.
In June 2021, the respondents filed a complaint with the WIPO Arbitration and Mediation Centre in relation to the Domain Name in accordance with the .au Dispute Resolution Policy (.auDRP), on the basis that the Domain Name was confusingly similar to a trade mark in which they had rights. The WIPO panellist found that the Domain Name was confusingly similar to trade marks in which the respondents had rights, and ordered that the Domain Name be transferred to the first respondent.
The .auDRP provides that (1) panel decisions under the .auDRP are binding on both parties, and there is no appeals process, and (2) if the unsuccessful party is not satisfied with the decision handed down by the panellist, they may decide to initiate legal proceedings against the other party.
In an attempt to stop the transfer of the Domain Name, the applicants filed the present proceeding. By their Originating Application in this proceeding, the applicants sought: (1) a declaration that the first applicant is the sole legal and beneficial owner of the Domain Name; and (2) an order that the domain name registrar (GoDaddy) be prohibited from transferring the Domain Name to the respondents. The Statement of Claim filed by the applicants pleaded, by reference to a hypothetical scenario, a contention that in respect of the relevant domain there was no unlawful passing off, no contraventions of the Australian Consumer Law and no “likely” contravention of the Trade Marks Act 1995 (Cth).
Justice Downes found that the Statement of Claim pleaded hypothetical facts for the purposes of attempting to overcome the respondents’ challenge to jurisdiction. Her Honour found that the Statement of Claim did not plead any reasonable cause of action, and, as it was based upon contingent facts, that it had the character of seeking an advisory opinion which would not relate to a real question. On that basis, Downes J held that the declarations sought by the applicants did not relate to a “matter” within the meaning of section 39B(1A) of the Judiciary Act 1903 (Cth) and were therefore outside the jurisdiction of the Federal Court.
Further, her Honour held that the claims in the proceeding were therefore “colourable” in the sense that they were “made for the improper purpose of fabricating jurisdiction” such that they were not made bona fide.
On those bases, Downes J dismissed the proceeding.