New South Wales Supreme Court CITATION : Body Technology Pty Limited v Babak Moini & Ors [2010] NSWSC 1414 HEARING DATE(S) : 1 December 2010 JUDGMENT OF : Ball J EX TEMPORE JUDGMENT DATE : 1 December 2010 1. Grant the plaintiff leave to proceed against the fifth and sixth defendants in their absence pursuant to UPCR rule 11.4(1). DECISION : 2. Revoke the order made on 4 March 2010 restraining the fifth and sixth defendants from publishing, broadcasting or distributing any content on the website www.avana.com in Australia. 3. Order that, until further order of the court, the sixth defendant unlock the www.avana.com domain name and provide the plaintiff with the necessary authorisation/EPP code to enable the plaintiff to transfer the www.avana.com domain name to a registrar of the plaintiff's choice. 4. Order that, until further order of the court, the fifth defendant is restrained from preventing the www.avana.com domain name being transferred to a registrar of the plaintiff's choice. CATCHWORDS : PROCEDURE – interlocutory issues – injunctions – mandatory injunction requiring defendant to give control of website to plaintiff – website registered with foreign registrar – whether court has jurisdiction to make orders – whether court should revisit earlier court decision LEGISLATION CITED : Trade Practices Act 1974 (Cth) Uniform Civil Procedure Rules 2005 (NSW) CATEGORY : Procedural and other rulings Brimaud v Honeysett Instant Print Pty Limited (1988) 217 ALR 44 Businessworld Computers Pty Ltd v Australian Telecommunications Commission (1988) 82 ALR 499 CASES CITED : CGU Insurance Limited v One.Tel (In Liq) [2010] HCA 26 Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380 Tolhurst v Associated Portland Cement Manufacturers Ltd [1903] AC 414 Body Technology Pty Limited ACN 126 404 091 (Plaintiff) Babak Moini (First Defendant) Barodo Investments Pty Limited ACN 102 667 274 (Second Defendant) PARTIES : Cosmetic Laser Clinic Pty Limited ACN 088 287 227 (Third Defendant) Health and Beauty International Limited (In Liquidation) ACN 129 945 853 (Fourth Defendant) Nevodnich Olga Semenivna USR 20009608512 t/as Megahoster.Net (Fifth Defendant) UK2 Group Limited 50441 t/a Resell.Biz (Sixth Defendant) FILE NUMBER(S) : SC 2009/326322 COUNSEL : Mr S O'Brien (Plaintiffs) No Appearance (Defendants) SOLICITORS : Yates Beaggi Lawyers (Plaintiff) No Appearance (Defendants) - 1 - IN THE SUPREME COURT OF NEW SOUTH WALES EQUITY DIVISION BALL J 1 DECEMBER 2010 2009/326322 BODY TECHNOLOGY PTY LIMITED v BABAK MOINI & ORS EX TEMPORE JUDGMENT 1 This is an application to vary interlocutory orders made by Bryson AJ on 4 March 2010. 2 On 19 November 2009, the plaintiff purchased the business of Avana Cosmetic & Laser Clinics. Previously that business had been sold to the fourth defendant by the second and third defendants. The business bought by the fourth defendant was then sold to the plaintiff. One of the assets of the business is the website and domain name "www.avana.com". The Registrar for the domain name is the sixth defendant which is incorporated in Gibraltar but carries on business in the United States. 3 At some time unknown to the plaintiff, control of the website was transferred to the fifth defendant which is based in the Ukraine. The fifth defendant has caused to be published on the website material highly critical of the plaintiff and the individuals behind the plaintiff. 4 On 4 March 2010 Bryson AJ granted ex parte orders giving the plaintiff leave to proceed against the fifth and sixth defendants and ordering that the fifth and sixth defendants be restrained from publishing, broadcasting or distributing any content on the website in Australia until further order of the court. Those orders have not been complied with. The plaintiff now seeks mandatory interlocutory orders which in effect would give control of the website to the plaintiff. The sixth defendant has indicated in correspondence that it will comply with any orders of the court. 5 Four issues are raised in the application. The first is whether the court has jurisdiction to make the orders sought by the plaintiff. The second is whether there is a serious question to be tried in relation to the final relief that is sought by the plaintiff. The third is whether the balance of convenience is in the plaintiff's favour. The fourth is whether the court ought to revisit the decision made by Bryson AJ. 6 So far as the question of jurisdiction is concerned, I am satisfied that this court has jurisdiction to make the orders sought. The motion and supporting affidavits have been served on the fifth and sixth defendants in accordance with orders that I made. It seems to me that the fifth and sixth defendants are amenable to the jurisdiction of the court, certainly at least on the basis that they are proper parties to the proceedings that have been commenced: see UCPR r 11.2, Sch 6(i). They are exercising rights in relation to property which the plaintiff claims was transferred to it pursuant to an agreement with the fourth defendant. 7 As to the question whether there is a serious question to be tried, I am satisfied that the plaintiff has a strongly arguable case. I do not think it is necessary to deal with all of the causes of action pleaded by the plaintiff. I should, however, mention two. The first is that the plaintiff claims to be the equitable assignee of the fourth defendant's rights under the contract that the fourth defendant entered into with the second and third defendants and, in particular, of the right to acquire the domain name and website. In support of that case the plaintiff relies on the decision in Tolhurst v Associated Portland Cement Manufacturers Ltd [1903] AC 414 and also the decision in CGU Insurance Limited v One.Tel (In Liq) [2010] HCA 26. Second, the plaintiff claims that the fifth and sixth defendants have engaged in and are threatening to engage in misleading and deceptive conduct in breach of s 52 of the Trade Practices Act. The plaintiff has a reasonably arguable case that that misleading conduct occurs in Australia and that the fifth and sixth defendants have authorised that conduct: Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380. 8 As to the balance of convenience, it is now well established that the same principles apply to mandatory as well as to negative injunctions. The essential question is whether the balance of convenience favours the granting of the injunction. That question is to be answered by asking which course of action carries a lower risk of injustice: see Businessworld Computers Pty Ltd v Australian Telecommunications Commission (1988) 82 ALR 499 at 504 per Gummow J. 9 Here it seems to me that damages would be very difficult to quantify if the fifth defendant were permitted to continue to publish the material that has been published on the website. In addition, it appears on the evidence before me that the plaintiff has a strong case that it acquired the website and domain name and that the material on the website is misleading. In those circumstances, it is difficult to see what defence the fifth defendant in particular would have to the plaintiff's claim. 10 As to the question of the orders that should be made, I accept that the orders that were made by Bryson AJ have proved to be ineffective. In those circumstances it seems to me that this is a case that falls within the principles stated by McLelland J in Brimaud v Honeysett Instant Print Pty Limited (1988) 217 ALR 44. 11 The orders of the court are: a Grant the plaintiff leave to proceed against the fifth and sixth defendants in their absence pursuant to UPCR rule 11.4(1). b Revoke the order made on 4 March 2010 restraining the fifth and sixth defendants from publishing, broadcasting or distributing any content on the website www.avana.com in Australia. c Order that, until further order of the court, the sixth defendant unlock the www.avana.com domain name and provide the plaintiff with the necessary authorisation/EPP code to enable the plaintiff to transfer the www.avana.com domain name to a registrar of the plaintiff's choice. d Order that, until further order of the court, the fifth defendant is restrained from preventing the www.avana.com domain name being transferred to a registrar of the plaintiff's choice. ********** DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. 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