FEDERAL COURT OF AUSTRALIA Speedo Holdings B.V. v Evans (No 2) [2011] FCA 1227 Citation: Speedo Holdings B.V. v Evans (No 2) [2011] FCA 1227 Parties: SPEEDO HOLDINGS B.V. AND ANOR v DAVE EVANS File number: NSD 1442 of 2011 Judge: FLICK J Date of judgment: 3 November 2011 Catchwords: PRACTICE AND PROCEDURE – application for default judgment – no defence filed – default by respondent – satisfied of claim to relief – allegations in statement of claim deemed to have been admitted – discretion in favour of granting relief Legislation: Australian Consumer Law (Cth) ss 18, 29(1)(g) Competition and Consumer Act 2010 (Cth) Sch 2 Federal Court of Australia Act 1976 (Cth) 31A Federal Court Rules O 35A r 3, O 37 r 3, O 42 r 13, O 62 r 4, O 80 r 4 Federal Court Rules 2011 rr 1.32, 4.12, 5.01, 5.02, 5.22, 5.23, 9.52, 9.55, 10.23, 10.24, 11.01, 16.32, 40.02, 41.09 Trade Marks Act 1995 (Cth) s 120 Trade Practices Act 1974 (Cth) ss 52, 53 Cases cited: ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577, considered Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433, cited Australian Building and Construction Commissioner v Abbott (No 3) [2011] FCA 340, cited Australian Competition and Consumer Commission v 1Cellnet LLC [2005] FCA 856, considered Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2006] FCA 1427, 236 ALR 665, considered Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2007] FCAFC 146, 161 FCR 513, cited Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) [2002] FCA 1487, 196 ALR 576, considered Australian Competition and Consumer Commission v Yellow Page Marketing BV (No 2) [2011] FCA 352, cited Bank of Kuwait and the Middle East v Ship MV "Mawashi Al Gasseem" (No 2) [2007] FCA 815, 240 ALR 120, cited Bucketts Road Business Services Pty Ltd v Phalona Pty Ltd [2008] FCA 57, cited Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302, considered CNIP Pty Ltd v Chan & Naylor Norwest Pty Ltd (No 2) [2011] FCA 1170, considered CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279, 128 FCR 408, referred to Lawson v NSW Minister for Land and Water Conservation [2007] FCA 8, cited Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388, considered Macquarie Bank Ltd v Seagle [2005] FCA 1239, considered Macquarie Bank Ltd v Seagle [2008] FCA 1417, considered McKenzie v South Australia [2005] FCA 22, 214 ALR 214, cited Microsoft Corporation v Short [2011] FCA 247, cited Pearlman (Veneers) SA (Pty) Ltd v Bartels [1954] 3 All ER 659, considered Rathner v Bendigo Skyrider Pty Ltd [2011] FCA 626, cited Speedo Holdings B.V. v Evans [2011] FCA 1089, cited Sumitomo Mitsui Banking Corporation v Sumitomo Mitsui Financial Group Pty Ltd (No 2) [2009] FCA 496, cited Tucker v Western Australia [2009] FCA 1459, cited United Broadcasting International Pty Ltd v Turkplus Pty Ltd (No 2) [2010] FCA 1413, cited Date of hearing: 24 October 2011 Place: Sydney Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 49 Counsel for the Applicants: Mr M J Darke Solicitor for the Applicants: Ms O Gourley (Corrs Chambers Westgarth) Counsel for the Respondent: The Respondent did not appear IN THE FEDERAL COURT OF AUSTRALIA NSW DISTRICT REGISTRY GENERAL DIVISION NSD 1442 of 2011 BETWEEN: SPEEDO HOLDINGS B.V. First Applicant SPEEDO INTERNATIONAL LIMITED Second Applicant AND: DAVE EVANS Respondent JUDGE: FLICK J DATE OF ORDER: 3 NOVEMBER 2011 WHERE MADE: SYDNEY [In these orders, the terms "Infringing Speedo Domain Names" and "SPEEDO Marks" have the meanings given to them in the annexed Schedule]. THE COURT ORDERS THAT: 1. The Respondent, whether by himself, his servants, agents or otherwise, or under any alias, be restrained from infringing the SPEEDO Marks. 2. The Respondent, whether by himself, his servants, agents or otherwise, or under any alias, be restrained from registering any domain name containing the name SPEEDO, or a name substantially identical therewith or deceptively similar thereto. 3. The Respondent, whether by himself, his servants, agents or otherwise, or under any alias, be restrained from operating any website at a domain name containing the name SPEEDO or a name substantially identical therewith or deceptively similar thereto, and which website features persons wearing swimwear and related offensive images and content, including the websites at the Infringing Speedo Domain Names. 4. The Respondent transfer to the Applicants or as the Applicants direct within 21 days: (a) the registration of the Infringing Speedo Domain Names; and (b) the registration of any other domain name registered in the Respondent's name (including under any alias), or under the Respondent's control or power, containing the name SPEEDO or a name substantially identical therewith or deceptively similar thereto. 5. If the Respondent does not comply with the order in terms of the previous paragraph 4, a Registrar of the Court be appointed to sign all necessary documents to transfer the domain names referred to in that paragraph to the Applicants or as the Applicants direct. 6. There be an inquiry into damages suffered by the Applicants or into the profits made by the Respondent in respect of the conduct the subject of this proceeding and that the Respondent pay to the Applicants any such amount determined in that inquiry. 7. The Respondent pay the Applicants' costs. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. IN THE FEDERAL COURT OF AUSTRALIA NSW DISTRICT REGISTRY GENERAL DIVISION NSD 1442 of 2011 BETWEEN: SPEEDO HOLDINGS B.V. First Applicant SPEEDO INTERNATIONAL LIMITED Second Applicant AND: DAVE EVANS Respondent JUDGE: FLICK J DATE: 3 NOVEMber 2011 PLACE: SYDNEY REASONS FOR JUDGMENT 1 On 29 August 2011 there was filed in this Court an Originating Application and a Statement of Claim. 2 There has been a failure on the part of the Respondent, Mr Dave Evans, to enter an appearance, file a Defence or file any affidavit evidence. 3 The Applicants now seek default judgment. The Statement of Claim 4 The Statement of Claim alleges that the First Applicant (Speedo Holdings B.V.) and the Second Applicant (Speedo International Limited), together with their related companies and predecessors in business, have carried on a business of manufacturing, distributing and selling swimwear in Australia and overseas under and by reference to the name and trade mark "SPEEDO". 5 The First Applicant is said to have been and remains the registered owner of various registered Australian trade marks identified in a schedule annexed to the Statement of Claim. It is alleged that the business of the Applicants is "very large" and that they have a substantial and valuable reputation and goodwill associated with the name and trade mark "SPEEDO". 6 It is further alleged that the Respondent "has, under aliases, registered a number of domain names containing the name SPEEDO without the Applicants' consent". These domain names are particularised as follows: Domain name Date of registration http://www.aussiespeedoguy.net 22 Jun 2010 http://www.speedomoviespage.com 13 Apr 2010 http://www.speedonextdoor.com 13 Apr 2010 http://www.speedosnextdoor.com 13 Apr 2010 http://www.yearofthespeedo.com 28 Dec 2008 7 It is further alleged that the Respondent has "commenced to operate at various times, and continues to operate, commercial websites at the Infringing Speedo Domain Names". It is said that "the content" of these websites "features images of persons wearing swimwear briefs and related offensive images". Particulars are then provided. 8 The Applicants allege that "[e]ach of the Infringing Speedo Domain Names is substantially identical with, or deceptively similar to, each of the SPEEDO Marks". An infringement of the trade marks pursuant to s 120(1) of the Trade Marks Act 1995 (Cth) is alleged. In the alternative, it is alleged that the "Respondent has used the Infringing Speedo Domain Names as trade marks in relation to goods of the same description as, or services closely related to, the goods in respect of which the SPEEDO Marks are registered". Infringements of s 120(2) and (3) of the Trade Marks Act are alleged. 9 Separate from its causes of action arising under the Trade Marks Act, the Applicants further place reliance upon "unlawful passing off" and contraventions of ss 52 and 53(c) of the Trade Practices Act 1974 (Cth) and ss 18 and 29(1)(g) of the Australian Consumer Law (Cth) and/or the Australian Consumer Law (NSW). The Procedural History to Date 10 After the commencement of this proceeding on 29 August 2011 the matter first came before the Court on 21 September 2011. 11 Difficulties had been experienced by the Applicants in respect to service of the Originating Application and Statement of Claim upon the Respondent. On 21 September 2011 orders were made pursuant to rr 10.23 and 10.24 of the Federal Court Rules 2011 in respect to service upon the Respondent of the Originating Application and Statement of Claim and in respect to future service of documents: Speedo Holdings B.V. v Evans [2011] FCA 1089. 12 The proceeding next came back before the Court on 26 September 2011. On that date orders were made extending the time for the filing of a Defence to 10 October 2011 and further orders made for the filing of any application for default judgment or for an order pursuant to s 31A of the Federal Court of Australia Act 1976 (Cth). Any affidavits upon which the Respondent sought to rely in opposition to default judgment or for an order pursuant to s 31A were to be filed and served by 20 October 2011. The hearing of any such application was fixed for 24 October 2011. 13 Rule 11.01 of the Federal Court Rules 2011, it should be noted in passing, deals with the necessity for a party to provide an address for service. Rule 11.01(5), it may also be noted, provides as follows: If the party is not represented by a lawyer but provides an email address, the party agrees to receive documents at the email address. There is no counter-part to this provision to be found in the now repealed Federal Court Rules. Prior to any order being made on 21 September 2011 pursuant to r 10.24, the Applicants' solicitors had communicated by way of email with the Respondent on 16 August 2011. The Respondent's response stated in part: Thank you for sending that paperwork. I wanted to let you know that this is a valid email address with regard to correspondence. It may have been that that response was sufficient to have enabled the Applicants to place reliance upon r 11.01(5) without the need for a specific order pursuant to r 10.24. But, in any event, the order as made on 21 September 2011 removed any doubt as to the ability of the Applicants to serve documents at the email address identified in the order. 14 No Defence or affidavit evidence has been filed by the Respondent. The Respondent, however, has forwarded to the Court a number of emails. Default Judgment – Rule 5.23(2)(c) 15 The Applicants, by way of Interlocutory Application dated 14 October 2011, seek an order pursuant to r 5.23(2)(c) and/or (d) of the Federal Court Rules 2011. Only r 5.23(2)(c) continues to assume any immediate relevance. 16 Rules 5.22 and 5.23 provide in relevant part as follows: 5.22 When a party is in default A party is in default if the party fails to: (a) do an act required to be done, or to do an act in the time required, by these Rules; or (b) comply with an order of the Court; or (c) attend a hearing in the proceeding; or (d) prosecute or defend the proceeding with due diligence. 5.23 Orders on default … (2) If a respondent is in default, an applicant may apply to the Court for: (a) …; or (b) …; or (c) if the proceeding was started by an originating application supported by a statement of claim, or if the Court has ordered that the proceeding continue on pleadings — an order giving judgment against the respondent for the relief claimed in the statement of claim to which the Court is satisfied that the applicant is entitled; or (d) an order giving judgment against the respondent for damages to be assessed, or any other order; or (e) an order mentioned in paragraph (b), (c) or (d) to take effect if the respondent does not take a step ordered by the Court in the proceeding in the time specified in the order. Rule 5.23(1) provides for those circumstances in which it is the applicant that is in default; r 5.23(2) applies where it is the respondent that is in default. Note 1 to r 5.23 states that "[t]he Court may make any order that the Court considers appropriate in the interests of justice – see rule 1.32". 17 Rule 5.23 is the counter-part provision to Order 35A r 3 of the now repealed Federal Court Rules. Whereas the former Order 35A r 3(2) itself expressly conferred the discretionary power to make an order, that discretion is now to be found in r 1.32 of the Federal Court Rules 2011. 18 Rule 5.23(2)(c), in particular, is the counter-part provision to the former Order 35A r 3(2)(c). The former r 3(2)(c) was in substantially similar terms, other than that r 3(2)(c)(ii) expressly required the Court to be satisfied that it had "power to grant" the relief sought. In Macquarie Bank Ltd v Seagle [2005] FCA 1239 at [23], 146 FCR 400 at 406 it was submitted that this phrase "required proof of two elements, being first evidence of proper service … and second jurisdiction to grant the final relief sought". The deletion of those words in the current r 5.23(2)(c), it is respectfully considered, effects no difference – the Court could not be satisfied that the "applicant is entitled" to "relief" if it was not satisfied (inter alia) that a respondent had been served with the relevant documents and if it was not also satisfied that it had jurisdiction to grant the relief. 19 A number of principles that have been established in respect to the former Order 35A r 3(2)(c) continue to be equally applicable to the current r 5.23(2)(c). Some of those principles of relevance to the present application are as follows. 20 First, the power invoked by the Applicants remains discretionary. So much necessarily follows from the discretion conferred by r 1.32: cf Bank of Kuwait and the Middle East v Ship MV "Mawashi Al Gasseem" (No 2) [2007] FCA 815 at [9], 240 ALR 120 at 122 per Mansfield J; United Broadcasting International Pty Ltd v Turkplus Pty Ltd (No 2) [2010] FCA 1413 at [42] per Yates J. Just as the discretion must be exercised "cautious[ly]" where it is the applicant that is in default (cf McKenzie v South Australia [2005] FCA 22 at [26], 214 ALR 214 at 221 per Finn J; Lawson v NSW Minister for Land and Water Conservation [2007] FCA 8 at [22] per Stone J; Tucker v Western Australia [2009] FCA 1459 at [9] per Marshall J), the same caution must be exercised where it is the applicant who is seeking orders as against a defaulting respondent. 21 Other than necessarily recognising that the power must be exercised with caution, there is little detailed consideration as to how the discretion must otherwise be exercised. One source of assistance may, however, be found in ACOHS Pty Ltd v Ucorp Pty Ltd [2009] FCA 577. The applicant had there sought an order for judgment pursuant to the former Order 35A r 3(2) by reason of the respondents' "repeated and serious breaches of interlocutory orders made by the court". Jessup J there referred to Lenijamar Pty Ltd v AGC (Advances) Ltd (1990) 27 FCR 388 in which Wilcox and Gummow JJ were considering the terms of Order 10 r 7(1)(a), a provision which later became Order 35A r 3(1)(a). Their Honours said of that provision: It is to be noted that the power given by this rule is conditioned on one circumstance only: the failure of a party to comply with an order of the Court directing that party to take a step in the proceeding. There is no requirement of intentional default or contumelious conduct, although the attitude of the applicant to the default and the Court's judgment as to whether or not the applicant genuinely wishes the matter to go to trial within a reasonable period will usually be important factors in weighing the proper exercise of the discretion conferred by the rule. There is no requirement of "inordinate and inexcusable delay" on the part of the applicant or the applicant's lawyers, although any such delay is likely to be a significant matter. There is no requirement of prejudice to the respondent, although the existence of prejudice is also likely to be significant. And it must be remembered that, in almost every case, delay adversely affects the quality of the trial and is an additional burden upon the parties. … The observations which we have just made about the scope of O 10, r 7 are not intended to convey the impression that any failure to comply with a procedural direction will appropriately result in the dismissal of the proceeding. On the contrary, the rules must be administered sensibly and with an appreciation both of the fact that some delays are unavoidable, and unpredictable, by even the most conscientious parties and their lawyers, and of the likely serious consequences to an applicant of staying or dismissing a claim; … We would not wish our observations to cause respondents to apply for dismissal of proceedings simply because there has been a non-compliance with a direction by the applicant, even though it does not cause or indicate a continuing problem in preparing the matter for an early trial. The discretion conferred by O 10, r 7 is unconfined, except for the condition of non-compliance with a direction. As it is impossible to foresee all of the circumstances under which the rule might be sought to be used, it is undesirable to make any exhaustive statement of the circumstances under which the power granted by the rule will appropriately be exercised. We will not attempt to do so. But two situations are obvious candidates for the exercise of the power: cases in which the history of non-compliance by an applicant is such as to indicate an inability or unwillingness to cooperate with the Court and the other party or parties in having the matter ready for trial within an acceptable period and cases – whatever the applicant's state of mind or resources – in which the non-compliance is continuing and occasioning unnecessary delay, expense or other prejudice to the respondent. Although the history of the matter will always be relevant, it is more likely to be decisive in the first of these two situations. Even though the most recent non- compliance may be minor, the cumulative effect of an applicant's defaults may be such as to satisfy the judge that the applicant is either subjectively unwilling to cooperate or, for some reason, is unable to do so. Such a conclusion would not readily be reached; but, where it was, fairness to the respondent would normally require the summary dismissal of the proceeding. In the second of the two situations we postulate, a significant continuing default, it does not really matter whether there have been earlier omissions to comply with the Court's directions. Ex hypothesi the default is continuing and is imposing an unacceptable burden on the respondent. But the continuance of the non-compliance is of the essence of this situation. If, when the Court looks at the matter, the direction has already been complied with, the defaulting applicant may be ordered to pay any wasted costs; but it would be difficult to justify the dismissal of the proceeding solely because of that default. After having set forth these observations, Jessup J in ACOHS Pty Ltd continued as follows: [27] In the present case the applicant relies upon each of the "candidates" referred to in Lenijamar. It accuses the respondents of defaults which demonstrate an inability or (more specifically) an unwillingness to cooperate with the court and itself in having the matter ready for trial. It says also that those defaults are continuing, and are occasioning delay, cost and prejudice for itself in the prosecution of the proceeding. The applicant contends that the defaults of the respondents are sufficiently serious to justify an order shutting them out permanently from defending the applicant's claims. Indeed, the effect of the order which the applicant seeks would be to deliver complete success to it in the proceeding, without any investigation of the merit of its claims, and without consideration of the substance that the respondents' defences may possibly have. As I made clear to counsel in argument, that would be a very large step for the court to take, and I did not understand counsel for the applicant to propose that it should be taken save in a clear case of quite serious defaults by the respondent concerned. His Honour declined to "shut the respondents out from defending this proceeding": [2009] FCA 577 at [29]. 22 Second, the discretionary power to enter a default judgment is enlivened when (as in the present case) an applicant applies to the Court for an order. Rule 5.23(2) provides that where a respondent is in default "an applicant may apply to the Court". An applicant may, of course, decide not to do so. 23 Third, there is a difference in the terms in which the ambit of the power conferred by the former r 3(2)(c) ("the relief… that the applicant appears entitled to on the statement of claim") and the wording of the current r 5.23(2)(c) ("the relief claimed in the statement of claim to which the Court is satisfied that the applicant is entitled"). Notwithstanding that difference in language, the requirement imposed is not that an applicant prove by way of evidence the claim sought to be advanced; the requirement is that the Court needs to be "satisfied" on the face of the statement of claim that the applicant is entitled to the "relief" claimed: Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433 at [3] per Heerey J; Australian Competition and Consumer Commission v 1Cellnet LLC [2005] FCA 856 at [14] per Nicholson J; Bucketts Road Business Services Pty Ltd v Phalona Pty Ltd [2008] FCA 57 at [12] per Sackville J; Microsoft Corporation v Short [2011] FCA 247 at [7] per Stone J; Australian Building and Construction Commissioner v Abbott (No 3) [2011] FCA 340 at [11] per Gilmour J; Rathner v Bendigo Skyrider Pty Ltd [2011] FCA 626 at [9] per Gordon J. The facts as alleged in the statement of claim are deemed to have been admitted by a respondent: Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2007] FCAFC 146 at [42], 161 FCR 513 at 523 per Moore, Dowsett and Greenwood JJ. Perram J in CNIP Pty Ltd v Chan & Naylor Norwest Pty Ltd (No 2) [2011] FCA 1170 referred to some of the former authorities dealing with the former Order 35A and similarly concluded in respect to the current r 5.23(2)(c) as follows: [18] … However, since the introduction of Order 35A of the former Federal Court Rules 1979, it has been clear that the present default rule will be satisfied simply on the Court being satisfied that relief could be granted on the face of the pleading. … [19] Accordingly, the requirements of present Rule 5.23(2)(c) will be met if upon an inspection of the applicants' pleading I am satisfied that the applicants would be entitled to the two permanent injunctions that are now sought. 24 Fourth, to be satisfied that an applicant "is entitled" to the relief claimed in the statement of claim, the Court needs to be satisfied that "each element of the relevant civil wrong involved is properly and discretely pleaded in the statement of claim": Macquarie Bank Ltd v Seagle [2005] FCA 1239 at [24], 146 FCR 400 at 406 to 407 per Conti J; Macquarie Bank Ltd v Seagle [2008] FCA 1417 at [20] per Jagot J. 25 Fifth, in addition to the facts alleged in a statement of claim, the Court may permit recourse to limited further evidence. But it may not admit evidence which would alter the case as pleaded. 26 Thus, in Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2006] FCA 1427, 236 ALR 665 Kiefel J traced the evolution of the rules of this Court leading to the introduction in 2004 of Order 35A and then observed in respect to the operation of that provision as follows: [45] Arthur v Vaupotic Investments Pty Ltd [2005] FCA 433 and Luna Park Sydney Pty Ltd v Bose [2006] FCA 94 confirm that the rule permits regard to be had to the face of the statement of claim in order to determine whether the relief sought is made out. Those decisions and a number of others of this court confirm that no evidence needs to be adduced … … [47] An approach that does not deny the prospect of any additional, or different, relief being granted under O 35A is consistent with the general provisions of O 35, which permits judgment to be given regardless of whether the particular claim for relief is made. Order 35A does not itself deny the right to relief which may arise from admissions of the matters alleged in the statement of claim. No general rule prohibiting additional or varied relief should be implied. Whether it is permitted in any particular case should depend upon the nature of the case, the orders sought and whether the respondent is, or can be taken to be, cognizant of the prospect of such an order being made. All these considerations are within the discretion maintained by the terms of O 35A. In the present case the principal change in the relief sought is in the content of the declarations and injunctions and argument has been addressed by the respondents to them. [48] The terms of the rule do not, however, suggest recourse to affidavit evidence, in addition to the facts alleged in the statement of claim, as appropriate. The case law supports this view. Judgment must be entered according to the pleading alone: … [49] Stronger support for the view that some evidence might be permitted, concerning the appropriateness of the relief sought, is obtained from Phonographic Performance Ltd v Maitra [1998] 2 All ER 638 at 644; 41 IPR 225 at 231 … . Lord Woolf MR confirmed the general rule that "judgment on default is given upon the facts pleaded in the statement of claim and that affidavit evidence to supplement or support those facts is not appropriate as the pleaded facts are deemed to be admitted". His Lordship went on (also at All ER 644, IPR 231): However, that cannot be rigidly applied where the judge has to exercise a discretion whether to grant the relief sought. Where an injunction is sought facts relevant to the grant of that injunction, which are not deemed to be admitted, should be brought to the attention of the judge by way of affidavit or otherwise. Further, if the judge is aware of matters relevant to the exercise of his discretion, he can seek an appropriate explanation before coming to any decision … [50] It may be accepted that some further affidavit material may be accepted by the court in relation to the relief sought. The fourth and seventh respondents accept this to be the case and that the rule would not prohibit such an approach. They seek to rely upon evidence as to their present circumstances. This does not, however, mean that any evidence can be tendered. Evidence which would alter the pleaded case should not be admitted. Her Honour's decision was affirmed on appeal: Australian Competition and Consumer Commission v Dataline.net.au Pty Ltd [2007] FCAFC 146, 161 FCR 513. See also: Australian Competition and Consumer Commission v Yellow Page Marketing BV (No 2) [2011] FCA 352 at [62] to [63] per Gordon J. It is unnecessary for present purposes to consider whether the difference in language between the former Order 35A r 3(2)(c) and the current r 5.23(2)(c) also now permits the Court to grant any relief other than that claimed in the statement of claim. The Relief Now Claimed 27 In the present proceeding, there can be no doubt that: the Originating Application and Statement of Claim are, by reason of the orders made on 21 September 2011, taken to have been served on the Respondent on 29 August 2011; irrespective of the terms of the orders then made, the Respondent has acknowledged service of those documents; a copy of the Interlocutory Application and affidavits relied upon have been served upon the Respondent. For the purposes of r 5.23 of the Federal Court Rules 2011, there can equally be no question but that the Respondent "is in default". That "default" arises by reason of his failure to: attend in Court, either in person or by way of a lawyer, as required by r 5.01 of the Federal Court Rules 2011; and file a Defence within the 28 day period prescribed by r 16.32 of the Federal Court Rules 2011 or within the time as extended by order on 26 September 2011. He is also most likely in "default" by reason of his failure to: file an address for service "before the return date fixed in the originating application", as required by r 5.02 of the Federal Court Rules 2011. There potentially remains some uncertainty as to whether the Respondent "provide[d] an email address" for the purposes of r 11.01(5). But it is unnecessary to resolve whether the Respondent is also in "default" for failure to comply with r 5.02. 28 In such circumstances, it is necessary to also consider whether the allegations set forth in the Applicants' Statement of Claim make out the elements of the causes of action relied upon; whether those causes of action entitle the Applicants to the relief claimed; and whether the discretion to enter default judgment should be exercised in their favour. 29 Confined to the facts as alleged in the Statement of Claim, and regarding those facts as having been admitted, it is concluded that the elements of each of the causes of action relied upon have been made out. 30 Thus, and without exhaustively repeating the terms of the Statement of Claim, the Applicants maintain that there has been an infringement of a trade mark of which they are the registered owners. Reliance is placed by the Applicants upon s 120 of the Trade Marks Act. That section, omitting the "notes", provides as follows: When is a registered trade mark infringed? (1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. (2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or (b) services that are closely related to registered goods; or (c) services of the same description as that of services (registered services) in respect of which the trade mark is registered; or (d) goods that are closely related to registered services. However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion. (3) A person infringes a registered trade mark if: (a) the trade mark is well known in Australia; and (b) the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to: (i) goods (unrelated goods) that are not of the same description as that of the goods in respect of which the trade mark is registered (registered goods) or are not closely related to services in respect of which the trade mark is registered (registered services); or (ii) services (unrelated services) that are not of the same description as that of the registered services or are not closely related to registered goods; and (c) because the trade mark is well known, the sign would be likely to be taken as indicating a connection between the unrelated goods or services and the registered owner of the trade mark; and (d) for that reason, the interests of the registered owner are likely to be adversely affected. (4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is well known in Australia , one must take account of the extent to which the trade mark is known within the relevant sector of the public, whether as a result of the promotion of the trade mark or for any other reason. For the purposes of this cause of action, it is sufficient to note that the facts in the Statement of Claim establish the existence of registered trade marks and the infringement of those trade marks. The "Infringing Speedo Domain Names", as that term is used in the Statement of Claim, are "substantially identical with, or deceptively similar to" the registered trade marks. There is no doubt that the trade marks are "well known in Australia". 31 Again, the facts pleaded in the Statement of Claim also make out the elements of the tort of passing off. Attempts to formulate a definition of the tort and to define its essential elements have met with "mixed success": Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302. Gummow J, when a member of this Court, then observed: Passing off Within the passing-off action, there is an accommodation and adjustment of three competing interests. First, that of the plaintiff in protecting the commercial advantages flowing from his efforts and investment; secondly, that of the defendant in being free to attract purchasers for his goods and services by what appears to him to be an effective means; and, thirdly, that of consumers in selecting between competing goods and services without the practice upon them of misrepresentations. Attempts to produce a definition of the tort which is both succinct and comprehensive have had mixed success. … In Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 at 406, Lord Oliver of Aylmerton formulated the essential elements in a passing-off action without referring specifically to earlier authority. Now, Nourse LJ (in Consorzio del Prosciutto di Parma v Marks and Spencer plc [1991] RPC 351 at 368-369) has said that the formulations by Lord Diplock and Lord Fraser had not in his experience given the same degree of assistance in analysis and decision as "the classical trinity" of (1) reputation (2) misrepresentation and (3) damage. Nourse LJ regards what was said in the Borden case (supra) as signalling a "welcome return to the classical approach". It is neither necessary nor appropriate for us to comment upon these vicissitudes of the recent English case law. But it is to be observed that the law of passing off contains sufficient nooks and crannies to make it difficult to formulate any satisfactory definition in short form. However, "the classical trinity" does serve to emphasise three core concepts in this area of the law. This appeal is concerned with all of them, namely, the geographical requirements for a sufficient reputation, the nature of the interests damaged, and the significance of fraud in the making of the misrepresentation. An application for default judgment is obviously not the occasion to attempt any further or more detailed analysis of the elements of the tort. It is sufficient to conclude that each of the elements of the tort are set forth in the Statement of Claim and that the allegations of fact there set forth are taken to have been admitted. 32 The same facts also make out the claim in respect to misleading and deceptive conduct. 33 It is further concluded that in respect to one or other of those causes of action, the Applicants are entitled to the relief claimed in their Interlocutory Application. That relief substantially mirrors that sought in the Originating Application. No question arises as to relief being sought which extends beyond that of which the Respondent has notice. 34 An order may thus be made in terms simply restraining a party from infringing a trade mark: e.g., Microsoft Corporation v Short [2011] FCA 247. An order may also now be made for an account of profits or for damages to be assessed: e.g., CNIP Pty Ltd v Chan & Naylor Norwest Pty Ltd (No 2) [2011] FCA 1170 at [27]. Similarly, orders may be made for the transfer of a domain name and – in the event of default – for an officer of the Court to execute all such documents as are necessary to effect the transfer: e.g., Macquarie Bank Ltd v Seagle [2005] FCA 1239, 146 FCR 400; Macquarie Bank Ltd v Seagle [2008] FCA 1417. In accepting that the Court had power to order the transfer of domain names, in Seagle Jagot J concluded as follows: [23] Proposed orders 5 and 6 involve transfer of the domain names (that is, the names deceptively similar to the names of the applicants) to either of the applicants. The applicants submitted that these orders were appropriate as: (i) the Federal Court is a court of equity as regards matters within its jurisdiction (s 5(2) of the Federal Court of Australia Act, McIntyre v Perkes (1990) 22 FCR 260 and Elna Australia Pty Ltd v International Computers (Aust) Pty Ltd (1987) 14 FCR 461), (ii) the websites are instruments of the respondent's misleading and deceptive conduct and the court has inherent jurisdiction, in effect, to order delivery up and destruction of these instruments from the respondent's hands, (iii) these orders are necessary not to deny the respondent's title to the infringing articles, but rather to prevent their use in derogation of the applicants' rights, and will operate in aid of the injunctions, and (iv) by analogy, in a case for trade mark infringement the power to order delivery up and destruction covers not only infringing articles but also items used to manufacture infringing articles (Geodesic Constructions Pty Ltd v Gaston (1976) 16 SASR 453 at 471–2). I accept these submissions and will make orders accordingly. Rule 41.09 of the Federal Court Rules 2011, it should be expressly noted, provides that an application may be made for an order for "substituted performance" where a party "is bound, but neglects or refuses, to do an act". Rule 41.09 has its forbears in Order 37 r 3 of the now repealed Federal Court Rules. Order 37 r 3 was invoked in CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279, 128 FCR 408 where an order was made that in the event of default the Registrar "sign all necessary documents to transfer the domain name 'csrsugar.com' to the applicant or as the applicant directs". The present rule, and its predecessor, assume particular importance where a party does not cooperate in the transfer of a domain name. An applicant who is otherwise entitled to relief is not to be thwarted by an uncooperative opponent. Another instance of an order being made pursuant to the former Order 37 r 3 is provided by Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) [2002] FCA 1487, 196 ALR 576. Goldberg J addressed the former Order 37 r 3 and continued on to also make the following observations: [42] It may well be that by ordering the company to transfer the registration of the domain name to the Commission I am ordering the company to do an act outside the jurisdiction, that is to say outside the geographic boundaries of the Commonwealth of Australia, as what is required is a direction or instruction to Verisign Inc, the registrar of the top-level domain name ".com". Alternatively, the order might be viewed as an order directing the company to transfer a licence granted by an entity outside the jurisdiction to the Commission. [43] The order sought is in the nature of a mandatory injunction directed to the company which is subject to the jurisdiction of the court to perform an act. The court has power to make such an order by virtue of the grant of power given to the court in s 23 of the Federal Court of Australia Act 1976 (Cth) and also by reference to the court's power to make orders in matters properly before it "as an incident of the general grant to it as a superior court of law and equity of the jurisdiction to deal with such matters" … [44] It is of no consequence that the order sought against the company relates to property which may be situated outside the jurisdiction as the order is sought in personam. It has been well established for over 200 years that a court has jurisdiction to make an order against a person within the jurisdiction of the court albeit to do an act in respect of property outside the jurisdiction …. The principle is based upon the proposition that the court is acting in its equitable jurisdiction in relation to a person within its jurisdiction … See also: Australian Competition and Consumer Commission v 1Cellnet LLC [2005] FCA 856 at [15]; Sumitomo Mitsui Banking Corporation v Sumitomo Mitsui Financial Group Pty Ltd (No 2) [2009] FCA 496. There is some difference in language between the current r 41.09 and the former Order 37 r 3. Rule 41.09(1)(a), for example, refers to a person who "is bound, but neglects or refuses, to do an act"; Order 37 r 3 previously referred to a "person bound to do an act" and who "does not do the act". Whether the addition of the words "neglects or refuses" may at some stage be construed as requiring the proof of some additional element - in addition to proof of the simple fact that a person has not done a specified act - may be left for future consideration. Rule 41.09 is also now expressed in terms of a person applying to the Court whereas the former Order 37 r 3 was expressed in terms of itself conferring the discretionary power upon the Court to make an order. The power, however expressed, is an essential power – especially in those circumstances where one party is refusing or unwilling to cooperate or assist the Court in the resolution of claims being made. 35 It is further concluded that the discretion to grant the relief sought in the Interlocutory Application should be exercised in favour of the Applicants because: the Respondent has repeatedly declined to provide further details as to his identity (other than "Dave Evans") or an address for service (other than the email address identified in the orders made on 21 September 2011); and such conduct of the Respondent as has been brought to the attention of the Court establishes that the Respondent has no intention of either actively defending the case brought against him by the Applicants or complying with orders of the Court or otherwise attending in Court to provide such assistance as he considers may be appropriate in opposition to the Applicants' case. That conduct includes (in particular) both the failure of the Respondent to file a Defence within the further time permitted and the text of the email forwarded to the Applicants' solicitors on 17 August 2011 as previously set forth: [2011] FCA 1089 at [18]. That conduct must also be construed against a more recent addition to the Respondent's "blog website" on 27 September 2011 that states (for example): "I'm not sure an Australian Court can impose its ruling. "Dave Evans" is being sued, that isn't my full name, they don't know my address, the websites aren't registered in my name and the websites aren't hosted in Australia …" Such evidence as the Applicants sought to rely upon, not to supplement any factual allegation in the Statement of Claim but rather in support of the manner in which the discretion should be exercised, was properly admissible. 36 Although as recognised by Jessup J in ACOHS Pty Ltd, an order pursuant to r 5.23(2) necessarily means that judgment is entered without any investigation of the merits of the claim sought to be advanced by the Applicants, it is not considered that such an order in the present proceeding has the effect of "shutting" the Respondent out from defending a claim that he otherwise sought to resist or defend. The order may well not have been made had there simply been a default in the filing of a Defence within the time prescribed by the rules or within the further time that was permitted. That default, however, does not rest alone. It is to be taken into account when exercising the discretion together with a conclusion that the Respondent has no real intention of cooperating with the Court and no real intention of participating in any Court process. No question arises in the present proceeding of "shutting" a respondent out who genuinely wishes to be heard. 37 Such reasons as have been advanced on the Respondent's "blog website" for not entering an appearance and attending personally in Court, albeit necessarily not advanced by way of affidavit, are without substance. Those reasons include contentions that: he is "not out to all my friends and some of my family"; and he "can't afford legal representation". The disclosures made on the Respondent's website deny any prospect that attendance in this Court would disclose anything that has not already been publicly disclosed by the Respondent. In any event, whether or not he is "bisexual" as stated on his website or whether or not he is "out", are matters of no relevance to the issues to be resolved. And many litigants in this Court appear unrepresented. This Court, as with other superior courts, ensures as far as possible that no litigant is disadvantaged by reason of being unrepresented. And, notwithstanding suggestions that have apparently been made to the Respondent to seek "free legal services", there is no basis upon which any conclusion could be reached that he has even attempted to explore the prospect of any entitlement to legal aid. In an appropriate case, this Court may itself refer a party for legal assistance. That power is now conferred by r 4.12 of the Federal Court Rules 2011. It was previously conferred by Order 80 r 4 of the now repealed Federal Court Rules. 38 Some attention, it may thus be noted, has been given to the content of the Respondent's "blog website" and the emails expressly referred to. That is the only means available to the Court to discern any potential reason for not exercising the discretion to grant the Applicants the relief which is sought. Even an unwillingness on the part of a party to a proceeding not to cooperate with the processes of the Court may not necessarily in itself be a sufficient reason to enter a default judgment. Some reason may emerge which exposes, albeit perhaps in a manner unknown to such a party, a reason why a case should proceed to hearing. But no discretionary reason emerges in the present proceeding from the emails or from the materials otherwise before the Court to deny the Applicants the relief that is sought. Such consideration as has been given to the Respondent's "blog website" has been confined to that material annexed to affidavits filed by the Applicants. 39 The Applicants at the hearing on 24 October 2011 also foreshadowed that an order for costs would be sought in a "lump sum" pursuant to r 40.02(b) of the Federal Court Rules 2011. Order 62 r 4(2)(c) of the now repealed Federal Court Rules previously referred to a "gross sum specified in the order." The foreshadowed application, however, was later abandoned. A Fictitious Respondent? 40 After the conclusion of the hearing on 24 October 2011, the Respondent forwarded a further email to the Court stating as follows: On Monday Judge Flick has given me an opportunity to respond to this court case thing. I'm not sure how to respond and I apologise for my ignorance in these legal proceedings. If you can forward this email to Judge Flick that would be appreciated. I'd just like to tell the Judge the 'Dave Evans' is a fictitious character. He doesn't exist. The blogs first author started it in May 2005 – was Dave Evans 17yo when he started it? At the time he lived in Canada and was 19yo and a volunteer ski patroller. I'm not sure how the residential status of a fictional character works legally. As for the business side of things – running an adult business out of Australia has been pretty much impossible since the late 90's due to legal, technical and cost limitations. Tracing an email or a website is childs play and if there was an Australian connection then I'm sure Speedos lawyers would knocking on somebodies door but I think they know that nothing is based in Australia. Thank you for your time. A copy of that email was forwarded to the Applicants' solicitors for their comment. The date first fixed for publication of reasons for judgment – Monday 31 October 2011 – became an opportunity for the Applicants to make such further submissions in respect to this email as they saw fit. 41 It was their primary submission that the email should be disregarded as containing statements which were beyond being tested. The contents of the email may be totally without foundation – but there was no means whereby the Applicants could test the statements by way of cross-examination. The orders previously sought, it was submitted, remained appropriate orders. That submission is accepted. 42 Even if consideration were to be given to the contents of the email, no different conclusion would have been reached. 43 The person presently identified as the Respondent remains the person named as the "administrative contact" in respect to the domain names in issue. And a person at least going by that name has been responding by way of emails to such documents as have been forwarded to the email address the subject of previous orders. There is also much to be said for the proposition that the Respondent has been operating under the business name of "Dave Evans". Rule 9.52 of the Federal Court Rules 2011 permits a proceeding to be started against a business name in the circumstances there identified. Rule 9.52, it may be noted, is the counterpart provision to Order 42 r 13 of the now repealed Federal Court Rules. Rule 9.55 of the Federal Court Rules 2011 also permits a variation to an order. If it became necessary at some later stage to amend the name of the Respondent, that is a matter that can be addressed and resolved when necessary. 44 It may also be noted that any error in the identification of a party has not precluded Courts from giving effect to orders made. Corrections can be made – even on appeal: e.g, Pearlman (Veneers) SA (Pty) Ltd v Bartels [1954] 3 All ER 659. The defendant had there been wrongly described. When attempts were made to enforce the judgment in a German Court, the defendant unsuccessfully contended that the judgment was invalid and unenforceable. In rejecting the argument, Denning LJ (with whom Hodson LJ agreed) concluded: When the substantive judgment is not being altered, but only the title of the action, it is to my mind plain that this court has ample jurisdiction to correct any misnomer or misdescription at any time whether before or after judgment … The present proceeding, it may relevantly be noted, has not yet been finally resolved and no question yet arises as to the necessity for any appellate Court to even consider questions arising as to whether the present Respondent has been correctly identified. 45 Little reliance can, in any event, be placed upon email communications. This Court proceeds upon the basis of evidence; litigation is not conducted by reference to private email communications between a party and the Court itself and without any opportunity for an opposing party to meaningfully participate in the process of communication. 46 Notwithstanding the statements made in the email set forth, it remains the conclusion of the Court that the orders sought by the Applicants in their Interlocutory Application should be made. This email, it may further be noted, only further reinforces the conclusion separately made that the Respondent has no intention of either attending in Court or assisting in the resolution of the claims made against him. Conclusions 47 Orders should be made substantially as sought by the Applicants in their Interlocutory Application as filed on 14 October 2011. The only variation to those proposed orders is to insert a 21 day period within which the domain names are to be transferred. Failure on the part of the Respondent to do so within that time will engage the terms of Order 5. 48 Whether any further orders should be made as against the Respondent arising out of his email communications is a matter best left to be resolved if and when the occasion to do so arises. At the conclusion of the hearing on 31 October 2011, a statement was made that any further email communication would not be read. A further email forwarded to the Court thereafter has, accordingly, not been read and has simply been placed with other documents in the Court file. 49 There is no reason why the usual order as to costs should not be made such that the Respondent should be ordered to pay the costs of the Applicants. ORDERS [In these orders, the terms "Infringing Speedo Domain Names" and "SPEEDO Marks" have the meanings given to them in the annexed Schedule]. The Court Orders that: 1. The Respondent, whether by himself, his servants, agents or otherwise, or under any alias, be restrained from infringing the SPEEDO Marks. 2. The Respondent, whether by himself, his servants, agents or otherwise, or under any alias, be restrained from registering any domain name containing the name SPEEDO, or a name substantially identical therewith or deceptively similar thereto. 3. The Respondent, whether by himself, his servants, agents or otherwise, or under any alias, be restrained from operating any website at a domain name containing the name SPEEDO or a name substantially identical therewith or deceptively similar thereto, and which website features persons wearing swimwear and related offensive images and content, including the websites at the Infringing Speedo Domain Names. 4. The Respondent transfer to the Applicants or as the Applicants direct within 21 days: (a) the registration of the Infringing Speedo Domain Names; and (b) the registration of any other domain name registered in the Respondent's name (including under any alias), or under the Respondent's control or power, containing the name SPEEDO or a name substantially identical therewith or deceptively similar thereto. 5. If the Respondent does not comply with the order in terms of the previous paragraph 4, a Registrar of the Court be appointed to sign all necessary documents to transfer the domain names referred to in that paragraph to the Applicants or as the Applicants direct. 6. There be an inquiry into damages suffered by the Applicants or into the profits made by the Respondent in respect of the conduct the subject of this proceeding and that the Respondent pay to the Applicants any such amount determined in that inquiry. 7. The Respondent pay the Applicants' costs. I certify that the preceding forty-nine (49) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Flick. Associate: Dated: 3 November 2011