REASONS FOR JUDGMENT
1 CSR Limited ("CSR") seeks an injunction against the first respondent, Resource Capital Australia Pty Limited ("RCA") and Marcus Stephen Boland ("Mr Boland"), the second respondent, restraining each of them from using as part of a domain name or otherwise the letters or names "csr" or "csrsugar".
2 The RCA is a company incorporated in New South Wales in 1997. Mr Boland is its sole director and secretary. He has, so I am told, a law degree but appears not to be admitted either as a barrister or as a solicitor in this State. By leave, he appeared for the first respondent and was unrepresented in his capacity as the second respondent.
3 The case for CSR is relatively straightforward. CSR is a publicly listed company which carries on business in Australia, New Zealand, Canada, some parts of Asia and some parts of Europe. Its activities are diverse. However, the main activities are the refining and sale of sugar and sugar by-products and the manufacture and sale of building materials.
4 Sales made by the various companies in the group of companies of which CSR Limited is the holding company are approximately seven billion dollars. The group employs some 16,000 people of whom some 6,000 work in Australia and New Zealand and the balance in other countries.
5 CSR was originally incorporated in 1855 under the name of Colonial Sugar Refining Company. It changed its name in the 1970's to its present name. In so doing it is possible that the origin of the initials has become lost. The group of companies produces some 4% of raw sugar traded on the world market. Approximately two million tons of raw sugar per annum are produced by its sugar mills, amounting to some 40% of Australia's total raw sugar. It is one of the largest sugar millers in the world. Major customers of the sugar milled in Northern Queensland include, in addition to Australian refiners, refiners in Korea, Japan and Canada. By-products include molasses and bagasse. Molasses is used for fermentation producing ethanol, yeast and monosodium glutamate. There are two production enterprises, called Sugar Australia and New Zealand Sugar in which CSR has a 50% joint interest which together are the major suppliers of refined sugar to Australia and New Zealand.
6 In evidence there was a large amount of marketing material, involving the name CSR in connection with or together with the word "sugar". A domain site www.csr.com.au/sugar on the CSR website contains considerable information about sugar production and recipes and promotes the CSR sugar brand.
7 It is unnecessary to list the large numbers of trade mark registrations CSR has in connection with sugar and by-products. It suffices to say that both "CSR" and "CSR Sugar" are registered trade marks in respect of sugar itself and sweetening agents or sugar containing products in various classes. There is also an extensive trade mark protection of "CSR", the name, in conjunction with construction materials.
8 On 28 September 2001 RCA obtained registration in NSW of the business name CSR Sugar Supply. On the same day RCA registered the domain name "csrsugar.com". Additionally it registered "csrsugar.com.au".
9 In Australia domain names are registered by the company Melbourne IT Limited. The nature of a domain name, which in essence is a name which when entered into a computer linked on the internet maps to particular numbers used in intercomputer transactions, is discussed by Aldous LJ in British Telecommunications plc v One in a Million Ltd [1998] 4 All ER 476, a case dealing with what remedies were available in passing off against a company which registered domain names close to popular trade marks and then sought to sell them to the proprietor of the trade mark for a figure greatly in excess of the cost of registration. I shall return to that case later in these reasons.
10 The business name registration for CSR Sugar Supply shows the nature of its business as the "sales & supply of sugar & related products." It shows also that that business had commenced on 28 September 2001. It can readily be inferred that the information on the register originated from RCA at the time it sought the registration. The business name was deregistered in 2002 at the instance of CSR.
11 RCA also registered a business name Combined Sugar Retailers Sugar Supply on 23 April 2002. Its business, according to a search of the register of business names was said to be "sales & supply of sugar & related products." The business is said to have commenced on 22 April 2002. Again, the information on the register can be inferred to have originated from RCA at the time it applied for registration of the business name. Registration of that name also ceased in November 2002 and it would seem at the instance of CSR.
12 It seems that RCA also obtained a domain name registration for the name "constructionmaterials.com.au" around the same time as it sought registration of the business name CSR Sugar Supply.
13 On 12 October 2001 RCA wrote to CSR advising that it was a Sydney based corporate advisory and investment company with an intellectual property division specialising in global IP solutions and protection. The letter noted that "as a service" RCA offered to sell to CSR the domain name "constructionmaterials.com.au" for a price of some $25,000 to $30,000. The letter suggested that this was a special price as an initial introductory offer and that the writer would be happy with share script instead of cash. A later letter threatened that the domain name would be offered to others if agreement was not reached. Apparently CSR did not take up the offer.
14 It does not seem that a similar letter was sent by RCA in respect of the two "csr" domain names of which registration was secured by RCA. Instead, on 11 March 2002 CSR wrote to RCA asserting its right to the "csr" name in association with "sugar" and demanding that RCA undertake under seal not to use the names "csr sugar" or "csr sugar supply" and discontinue both the business name and the licence held for the domain name with Melbourne IT Limited. RCA purported to be seriously affronted by CSR's demand. A letter of 2 April 2002 from Mr Boland on behalf of RCA to Nicole Leggett in the Legal Department of CSR claimed CSR to be acting male fides and to be "ill based in fact." In what can only be said to be a bizarre suggestion, Mr Boland claimed that he was seeking to protect the interests of shareholders of CSR by securing the relevant domain names and asked CSR to provide a full and proper explanation for its failure to register the domain names.
15 The next letter in evidence was a letter of 9 April 2002 from RCA to Ms Leggett requesting a meeting with the relevant executive of CSR. The letter complains at the disregard by CSR of the interests of its shareholders having regard to the "obvious commerciality and effect upon corporate value." The letter also complains of the refusal by CSR to provide to RCA a copy of CSR's intellectual property policy. There are threats to take the matter up with shareholders to obtain an appropriate sanction against the board and damages. Details are demanded of why CSR did not take up the offer to acquire the domain name, presumably referring to the construction material name.
16 When CSR did not respond RCA wrote again on 23 April 2002 demanding a meeting and advising that it was most certain that "an appropriate and satisfactory settlement of this matter can be achieved for both parties in good and ready time." The letter contained what might be seen to be an important admission by RCA (an admission which Mr Boland sought to contradict in his oral evidence):
"We note that throughout the entirety of this matter, you have failed to enquire or determine of us in any respect our aspirations and plans for the sugar industry in this country. We advise we are most seriously interested in the sugar supply side of the industry and hence our obvious endeavours to date in respect of same with respect to incorporation of appropriate sale and supply portals to facilitate these machinations.
…Our primary interest naturally is to see these businesses operating to full and expected capacity over time, and believe we are in a unique position to expand and enhance traditional sugar markets and supply chain as a result thereof."
17 On 12 September 2002 Messrs Clayton Utz, the solicitors for CSR, wrote to RCA claiming that RCA was in breach of the Trade Practices Act 1974 (Cth), was passing itself off or threatened to pass itself off as associated with CSR and also infringed s 120(1) of the Trade Marks Act 1995 (Cth). Undertakings to cease use of the domain name csrsusgar.com.au and not use names in which the CSR mark appeared were requested.
18 On 26 September 2002 RCA wrote to Ms Still, a partner of Clayton Utzcomplaining that attempts to have discussions with CSR had been invited but ignored. It was suggested that Clayton Utz was defamatory and was acting mala fide. There was a threat, which is somewhat difficult to understand, in the following terms:
"We now advise we shall be moving this matter to appropriate public knowledge status specifically in regards your client's demonstrated blatant failure to observe due and appropriate fiduciary duty in such a matter."
Nevertheless it is suggested that the matter was capable of "appropriate corporate resolution." If not the matter would be taken "to the public press and ASIC."
19 There appear to have been some attempt to arrange a discussion between appropriate executives and legal advisers. A meeting was held on 4 October 2002 between Ms Still, Ms Hooper also of Clayton Utz, Ms Leggitt and Mr Boland with Mr McKay of CSR on the telephone. Precisely what happened at that meeting is not clear but on 14 October 2002 Clayton Utz wrote to RCA advising that proceedings would be commenced in respect now of the two names "csrsugar.com" and "csrsugar.com.au." RCA replied in a letter of 17 October 2002. The letter suggested that the Clayton Utz letter was "directly contrary to arrangements and express representations made to us in this matter by yourself." Due legal process is said to have been abused. The letter suggested that there was an agreement that RCA would forward to CSR a report which would perhaps lead to "most serious identification of massive flaws in the company's IP policy." Details are sought of charges which Clayton Utz had made to CSR in the matter to date as well as all advices given on IP matters since the inception of Clayton Utz's retainer. There is emphasis on the need for "proper discussion with ourselves commercially", suggesting, one would think some requirement that RCA be paid money.
20 Clayton Utz replied in a letter of 21 October 2002 reiterating that it had instructions to commence proceedings and noting that RCA had declined to transfer the two registrations to CSR. Wrongdoing by CSR or Clayton Utz was denied. RCA responded the same day alleging misrepresentations by Clayton Utz and complaining of its conduct in preventing "appropriate and reasonable discussion in regards to this matter and expected due commerciality." The letter says, among other things:
"As you are also most aware this matter relates to the potential commercial value of the domain names and their appropriate commercial use and application to sugar sales, and the potential for construction of a maximized electronic program for same. In its essence and mainstream, it is a commercial matter."
21 The letter enclosed in what was said to be "in accordance with due and ordinate commercial practice a confidentiality agreement," following which the "subject IP Report" would be forwarded.
22 The final correspondence before proceedings commenced was a letter from Clayton Utz to RCA returning the confidentiality document unexecuted (a matter in respect of which Mr Boland complained in the course of the proceedings). The letter notes that RCA had offered to provide the report and that CSR was willing to consider it, but that CSR refused to give a non-disclosure agreement when it had no idea of the content of the report or the material to be covered by it.
23 The present application was filed on 24 October 2002. RCA did nothing about the matter, so far as the Court was aware, until it came before me for hearing on 11 February 2003. Mr Boland appeared in court that day and asked that the proceedings be adjourned. He complained that he had been let down by his solicitor. On Mr Boland giving an undertaking until judgment not to use the csrsugar.com name (the csrsugar.com.au domain name had, in the meantime been cancelled by Melbourne IT Ltd on 4 December 2002 following the deregistration of the business name CSR Sugar Supply on 15 August 2002) the matter was adjourned and orders were made for the filing of defences and affidavit evidence. A defence was filed (out of time) but no affidavits were filed and served until the date of the hearing when leave was sought and granted, to file an affidavit (unsworn) in court.
24 The "affidavit" contained little in the way of factual matters, and considerable argumentative material. I permitted some of the clauses in the affidavit to be read in so far as they did relate to what was said to be the motive of Mr Boland in undertaking the course he did. The unsworn document was then verified by Mr Boland from the witness box.
25 Before proceeding to note the defence filed by the respondents it might be mentioned that RCA did not restrict its attention to CSR alone. It wrote to another sugar company, Maryborough Sugar in Queensland, advising that RCA had obtained domain name registration of "maryboroughsugar.com.au" and offering for sale that domain name for between $5,000 and $10,000 for "introductory purposes." Again it was suggested that share script would be satisfactory payment.
26 This offer was obviously not found satisfactory by Maryborough Sugar, or so far as the evidence discloses.
27 RCA also, apparently, obtained a domain registration of "www.tullochwines.com". A subsequent dispute covering that domain name came before the Administrative Panel of WIPO Arbitration and Mediation Centre at the complaint of Southcorp Wines Pty Ltd and J Y Tulloch Pty Ltd, the former being the parent and the latter the subsidiary of it involved in making wine. The mediator's report, which was in evidence, noted that RCA had no interest in wine and that it was not feasible that RCA was unaware of the existence of the trade marks owned by the Southcorp group at the time of registration. It seems clear also that there had been an offer to sell the disputed domain name for a price "far exceeding the registration costs" which the panel regarded as constituting bad faith.
28 It was apparently suggested by RCA in the course of the arbitration that there had been no intention at the time the domain name was registered to attempt to sell it to Southcorp. That was a matter which apparently had arisen as a "polite afterthought." Not surprisingly the panel found the domain name confusingly similar to the name Tulloch in association with wine and the assertion that Mr Boland had been acting for a client (an assertion repeated in the witness box before me) was rejected. It was found by the panel that Mr Boland had acted in bad faith and that there was "no clearer case of cybersquatting."
29 What is to say the least strange is the defence which Mr Boland seeks to put to the court. His case is (despite both correspondence with CSR and representations on the business name applications to the contrary) that at no time did RCA or he ever intend to carry on a sugar business. He suggests, strangely, that in some way or other there was no CSR Sugar Limited (that may itself be true but of no relevance) and no CSR sugar division so that there could be no confusion caused to members of the public. The defence says that in any event, the sole purpose of RCA and Mr Boland was in essence to protect the shareholders of CSR and the company and to ensure that its assets (particularly its intellectual property assets) "were and are at all times positively and proactively managed to ensure total maximum balance sheet… value to shareholders." There are assertions of the fiduciary duty the board of CSR had to shareholders to protect its intellectual property and some self praise on the part of Mr Boland for having alerted CSR to actual and potential loss of current and future balance sheet values. The defence continues, "the second respondent also states that despite all such endeavour demeanour and constant attempts to put forward any such discussion and good intent the applicant preferred at all times to engage in abusive and unnecessary legal expense before establishing these matters or the bona fides of same in any way."
30 Although not referred to in the defence, Mr Boland, in evidence and from the bar table, asserted a desire to alert CSR of the significance of generic names as domain names in modern commercial worldwide dealings and, if I understood Mr Boland correctly, suggested that there were valuable intellectual property advantages to be obtained from generic names. While this may have some relevance to the domain name "constructionmaterials.com.au" (not the subject of the present proceedings) it is hard to see how it had any relevance at all to the "csrsugar" name.
31 Mr Boland was a far from impressive witness. He sought to give the impression that his intervention with CSR was altruistic and brought about by his desire to protect the company from itself in the intellectual property area. However, it is abundantly clear to me that Mr Boland at no time proceeded for an altruistic reason. His purpose in this matter, as in the other matters involving Maryborough Sugar and Tulloch, was to extract a reward, whether in money or shares from companies such as CSR, which had intellectual property rights. That money could come from, in effect, forcing the coming to pay for a transfer of the domain name or it might be extracted by forcing the target of Mr Boland's attention to pay for consulting services. Since Mr Boland's knowledge of intellectual property law struck me as far from well informed, a consulting agreement would hardly be worth the paper it was written upon. But perhaps some companies might prefer to pay up to obtain the relevant domain name registration rather than risk the continued registration of that name or litigation, whether in the form of WIPO mediation and arbitration or in this Court. As it happens CSR did neither but brought the present proceedings.
32 Although CSR put its case on both s 52 and s 53 of the Trade Practices Act 1974 (Cth) as well as by reference to an alleged infringement of trade marks pursuant to s 120 of the Trade Marks Act 1995 (Cth), it suffices really to consider only the case under s 52 of the Trade Practices Act 1974 (Cth), for if that case is made out then CSR would be entitled to the injunctive relief it seeks. The case under s 53 is not substantially different.
33 Section 52 of the Trade Practices Act 1974 (Cth) prescribes a norm of conduct, as part of the Parliamentary purpose of protecting consumers, to be found in Part V of that Act. The conduct required of a corporation is that it not, in trade or commerce, engage in conduct that is misleading or deceptive or likely to mislead or deceive. The Court has an undoubted discretion where it is satisfied that a person is either in breach of that code of conduct or is proposing to engage in conduct that would be in breach of that code of conduct to grant an injunction in such terms as the Court determines to be appropriate: s 80. Further it will be taken to be a breach of s 52 if a person procures another to contravene s 52 or is in any way knowingly concerned in such a contravention: s 79. Section 53 likewise prescribes a standard of conduct. It proscribes (but in connexion with the supply or possible supply of goods or services or in connexion with the promotion of the supply or use of goods or services) inter alia the representation by a corporation that it has an affiliation it does not have or that goods and services have sponsorship or approval they do not have.
34 While conduct may be misleading or deceptive even where it does not involve a representation which is false, a quite large percentage of the cases where contravention has been found under s 52 have involved representations. In Equity Access Pty Ltd v Westpac Banking Corporation (1990)16 IPR 431 at 440-442I set out in a judgment described by the learned authors of Miller's Annotated Trade Practices Act 1974 (24th Ed) 2003 at 1.52.5 as "a helpful summary of the principles to be applied in relation to s 52" a series of propositions culled from the cases to that time. These principles were later restated in a judgment of a Full Court of this Court in S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 at 361. They can be taken to apply in the present case.
35 There is no doubt that CSR has a considerable reputation in connection with the refining and sale of sugar and sugar products. Through the trade marks it owns and uses in connection with sugar and sugar products and the extensive advertising it undertakes, it can be said that CSR is a household name and further that any use of the initials CSR would immediately remind the user of the applicant here.
36 The business of RCA would seem to be, or at least to include the registering of domain names and turning those names to account, whether for money by transferring the domain names or by seeking to induce companies it targets to enter into agreements under which RCA provides intellectual property services for reward. Clearly in so doing it acts in trade or commerce. There is no doubt that Mr Boland, as the sole director and secretary of RCA, is knowingly concerned in the activities of RCA. Indeed, RCA is his alter ego so far as the evidence would suggest.
37 Mr Boland clearly has no great regard for the truth. He appears happy to obtain business name registrations, those being a necessary prerequisite for obtaining registration of domain names, without regard to the truth of what he represents to the Registrar of Business Names. It will be recalled that the certificate of registration suggests that RCA was said to have commenced a business of trading in sugar. He seemed not to mind repeating what I find to be a complete untruth, namely that RCA proposed to deal in sugar, in his correspondence with CSR. In my view Mr Boland had only the one interest in obtaining domain names with the word "csrsugar" and that had nothing to do with RCA trading in sugar. He wished to make money from that registration and believed he could do so by either selling the name to CSR or by causing CSR to pay for his services in the area of intellectual property.
38 In my view the obtaining of the registration of both domain names, "csrsugar.com" and "csrsugar.com.au" implied that the domain name belonged to CSR or, if it was noted that RCA was shown as owner of the names that RCA was in some way connected with CSR. Anyone seeing the domain name would assume, unless he or she made further enquiries and was told the truth, that CSR was the real owner of the domain name and entitled to use it for its purposes on the internet in connection with its sugar businesses. In my view the act of obtaining registration of both domain names constituted conduct that was misleading and deceptive or was likely to mislead and deceive persons and breached s 52 of the Trade Practices Act 1974 (Cth). It alternatively constituted a representation that CSR and RCA were affiliated.
39 As I have already note, the circumstances of this case it is clear that Mr Boland had full knowledge of everything that was done by RCA. Indeed he clearly represented RCA in all its activities. It follows that he was knowingly concerned in the contravention by RCA of s 52 of the Trade Practice Act 1974 (Cth). He would also be in breach of the Fair Trading Act 1987 (NSW) as himself engaging in conduct which was misleading and deceptive.
40 In my view the present is a clear case where not only orders should be made that RCA transfer the one presently registered domain name to CSR but also that injunctions should be granted in the form suggested by counsel for CSR, restraining both RCA and Mr Boland from registering any other domain name where the word CSR appears and whether in connection with sugar or otherwise.
41 I would also direct the Registrar of the Court to forward a copy of this judgment to Melbourne IT Limited with the suggestion that when dealing with RCA or Mr Boland or any company in which Mr Boland is a director, it require from him a statutory declaration both that at the time he seeks registration he is unaware of any trade mark or business or company name identical with or substantially similar to the domain name he seeks to register and does not hope or intend to transfer or agree to transfer that domain name to another person. The practice, in which Mr Boland has been involved, sometimes is called cybersquatting. There are probably less flattering names that could be used that might suggest the conduct verges on the criminal.
42 I think there is a real difficulty in relief being given under the Trade Marks Act 1995 (Cth) by virtue of RCA having infringed the CSR trade marks. It is a problem that is noted by the Court of Appeal in the One in a Million case but not ultimately decided by it. It is one thing to say that a cyber squatter who registers a name intending to sell that name to the owner of a trade mark or threaten a sale to a competitor if the owner does not come up with the money may have registered the name as an instrument of fraud, and thereby be guilty of the tort of passing off as was held by the Court of Appeal in England. The case of One in a Million was followed by Architects (Australia) Pty Ltd (trading as Architects Australia) v Witty Consultants Pty Ltd [2002] QSC 139 and Australian Stock Exchange Ltd v ASX Investor Services Pty Ltd (Burchett J, 3 June 1999, unreported). But it is another thing to say that for the purposes of s 120 of the Trade Marks Act 1995 (Cth) RCA used the domain name as a trade mark in relation to goods or services in respect of which CSR had registration or for that matter closely related to either goods or services referred to in the CSR registrations. No doubt it can be said that the interest of CSR were likely to be adversely affected by the acts of RCA but that is not sufficient to constitute an infringement. There could be a threatened infringement if one were to take seriously the suggestion that RCA intended to engage in the sugar trade. Clearly, however, that was not the real intention of RCA or Mr Boland, who at no time used or intended to use the domain names as trade marks in relation to either goods or services.
43 Fortunately it is unnecessary for me to decide that question. It suffices for the relief sought that I have found a breach of s 52 of the Trade Practices Act 1974 (Cth).
44 Finally there is the question of costs. While the order for costs is one in the discretion of the Court, which discretion must be exercised judicially, the order would normally be that the unsuccessful party pay the costs of the successful party on a party and party basis. However, there are exceptions, one of which is where a defendant seeks to defend a case on a basis that is frivolous and completely unfounded. Mr Boland has a law degree. He is not in the normal case of a self represented litigant who might have no knowledge of the law, albeit that his knowledge of the law might strike one as rather slight for one who holds himself out as an expert in intellectual property.
45 However, I have not been requested by counsel for CSR to order Mr Boland to pay costs on a solicitor and client basis, notwithstanding that such an order might well be warranted in the present case. For that reason I would merely order the respondents to pay the applicant's costs on the normal basis.
I certify that the preceding forty-five (45) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Hill.