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 Thomas.
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 Court;
- 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.
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