In the decision of Thomas International Limited v Humantech
Pty Ltd  FCA 541, the Federal Court of Australia
(Court) has granted an interlocutory injunction to
compel the transfer of domain names.
This was a new and unusual decision as such orders would
ordinarily be made after a final hearing.
Thomas International Limited (Thomas) operates
a largely internet-based business providing psychological testing
including psychometric, competency and skills-based assessments, in
addition to providing training and consultancy services.
Thomas entered into a Master Licence Agreement
(MLA) with Humantech Pty Ltd
(Humantech) in January 2007. Under the MLA,
Humantech was granted exclusive rights to appoint distributors to
market, sell and distribute Thomas' products throughout
Australia and South Africa.
Pursuant to a clause in the MLA, Humantech was obliged to not
sell, market or distribute any products which would in any way
compete with Thomas' products.
However, Thomas discovered that a company related to Humantach
was selling products in competition with Thomas' products, and
as a result, Thomas wanted to terminate the MLA following its
discovery of several breaches of the MLA by Humantech.
The Director of Humantech, Mr Schutte, was one of the
respondents in the proceedings that ensued, and related companies
to Humantech were also joined in the proceedings.
In settlement discussions between the parties commencing on 17
May 2015, an undertaking was signed by Mr Schutte
(Undertaking), which stated that Mr Schutte and
the related companies would immediately take all steps and do all
things necessary to transfer the domain names they operated to
Despite the Undertaking, the parties could not agree on the
terms of their new arrangement. Thomas then applied to the Court
for an interlocutory injunction to seek to enforce the Undertaking
to transfer the domain names.
On 27 May 2015, interlocutory orders were made by the Court to
grant the injunction, based on the balance of convenience and the
fact that Thomas had a strong prima facie case for final relief
given the failure to comply with the Undertaking.
The interlocutory orders compelled the transfer of the domain
names to Thomas, subject to the following undertakings being given
by Thomas to the Court:
that it would re-transfer the domain names if ordered by the
that it would pay compensation to any person who was adversely
affected by the injunction if ordered by the Court; and
that it would pay security for these undertakings.
Possible new avenue for relief
In addition to the existing avenues available for seeking relief
in domain name disputes, including commencing mandatory
administrative proceedings under the Internet Corporation for
Assigned Names and Numbers (ICANN) Uniform Dispute
Resolution Policy, this decision has created the possibility for
another avenue of relief to be explored where parties are seeking
the domain name to be transferred.
However, the particular facts of this decision need to be noted,
and the capacity to obtain such relief on an interlocutory basis
may be limited to circumstances where there is a previously signed
undertaking or similar document.
This publication does not deal with every important topic or
change in law and is not intended to be relied upon as a substitute
for legal or other advice that may be relevant to the reader's
specific circumstances. If you have found this publication of
interest and would like to know more or wish to obtain legal advice
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