05 Sep 2014

Legal Eagles lost in the (i)Cloud

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Claims by the unincorporated Australian Bar Association and the NSW Bar Association against Australian Barrister, Derek Minus regarding use of domain names claimed by the Associations has been denied by a World Intellectual Property Organization (WIPO) panel. Their decision was that:

The Panel is strongly of the view the Complainants should never have contemplated consolidation of these two complaints, given the disparate factual and legal basis of them.”

The decision was arrived at by a distinguished group of intellectual property lawyers comprising Michael J. Spence, Vice Chancellor of the University of Sydney, Mary Padbury, Vice Chairman of the global legal firm Ashurst LLP and Professor Andrew F. Christie, the foundation professor of intellectual property at the University of Melbourne.

Although the Panel only determined the preliminary issue of consolidation of separate claims by the ABA and NSWBAR and not their merits, the decision supported the arguments of Mr Minus, himself an experienced WIPO domain name arbitrator, that the claim should never have been brought in the manner in which it was filed.

As Mr Minus submitted:

This claim is an attempt by two unrelated entities, one with no legal standing to make a claim in an Australian court, to cobble together two separate and distinct complaints about two unrelated domain names, against two respondents that are separate legal entities with rights under Australian law.

 To proceed with a consolidated claim would be the antithesis of an efficient, effective and equitable resolution of the disputes and an abuse of the process of the auDA. This claim is both offensive and an embarrassment and should be rejected and required to be refiled according to the rules and policy of the auDA.

 The WIPO Panel concurred, noting that:

Though within the prescribed word limit, the amended Complaint strikes the Panel as being convoluted and complex, largely because it seeks to cover two disputes that relate to rather different factual and legal issues (including because one complainant has a registered trademark while the other claims common law rights in an unregistered mark, and one complainant is incorporated while the other is an individual representing an unincorporated association).

The fact that the Panel’s preliminary determination of the consolidation request has required such a lengthy decision of itself supports the Respondents’ position that consolidation will increase, not decrease, the time required to resolve the dispute.”

Also lost along the way, was an attempt by the President of the ABA, Mark Livesey QC, in whose name the claim was brought, to nominate the ABA’s own members to be the arbitrators to determine the complaint (see ABA nominates own members). Mr Livesey QC was surprisingly untroubled by the need for compliance with the rules of natural justice or even the appearance of justice being served by the appointment of an independent panel. However, the original panelists nominated by him all declined the opportunity to serve as the arbitrators, required as they were by WIPO to disclose “any circumstances giving rise to justifiable doubt as to the Panelist’s impartiality or independence”.

See: Mark Livesey QC and The New South Wales Bar Association v. Derek Minus and Dispute Resolution Associates Pty Ltd, WIPO Case No. DAU2014-0011