Australia: Complaint denied – what is the role of the .au dispute resolution policy in complex trade mark disputes?

An Administrative Panel has denied a complaint brought by Interpump Group SPA (Interpump Group) against Colussi Engineering Pty Ltd (Colussi) in respect of .au domain names relating to Interpump branded products sold by Colussi in Australia. The decision is an important reminder of the limits of domain name disputes and their role within broader trade mark infringement and contractual disputes. 

While the .au Dispute Resolution Policy can provide a cheaper and speedier alternative to litigation, the rules are not suitable for complaints that extend beyond the registration and use of .au domain names. In this case the Administrative Panel denied the complaint because there were a number of complex legal issues that needed to be determined before the Panel would be in a position to consider the grounds set out in the complaint. 

Interpump is an Italian manufacturer of high-pressure water pumps and accessories. It owns a number of trade marks for INTERPUMP in Australia, including in respect of pumps and high pressure cleaners. Colussi imported pumps from Intepump Group and operated under the name Interpump Australasia for over forty years. 

The parties dispute the scope of a verbal consent granted to Colussi during the initial stages of their commercial dealings and the validity of the steps subsequently taken by Interpump to terminate this licence. Interpump submitted that the disputed domain names should be transferred to them because they incorporated the INTERPUMP mark, Colussi has no rights in the domains and the domains were registered in, or used in, bad faith. 

The Panel recognised that there was also a dispute as to whether: 

• Colusssi had developed an independent reputation and goodwill in the Interpump name by supplying INTERPUMP branded products in Australia; 
•  Whether Colussi’s conduct infringed Interpump’s registered Australian trade marks, or constituted passing off or breach of the Australian Consumer Law; 
• The timing of the complaint meant that the claims should be barred by reason of laches, acquiescence or delay. 

Administrative panels have previously declined complaints where they were required to also determine the validity of attempts to terminate distribution arrangements. Complex trade mark issues also make it harder for the trade mark owner to prove that the registrant had no legitimate interests in the domain. In these decisions panels have noted that domain name dispute resolution policies were introduced to prevent extortionate or abusive cybersquatting, rather than providing an alternative, low-cost forum for complex trade mark disputes. 

In this case the Panel declined to hear Interpump’s complaint because of the complexity of the issues in dispute between the parties. These issues needed to be determined to assess Colussi’s rights to the disputed domains. The Panel held that these issues were beyond the scope of the administrative proceeding and were better suited to be resolved via litigation. 

This decision confirms that administrative panels may refuse domain name complaints where the registrant can establish that the relevant domains are part of a broader legal dispute and that domain name dispute resolution proceedings are an inappropriate forum.