FEDERAL COURT OF AUSTRALIA

Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 664

ORDERS

THE COURT ORDERS THAT:

1.    Until further order, the applicants have leave, pursuant to r 10.24 of the Federal Court Rules 2011 (Cth), to effect personal service of any document in this proceeding on the First Respondent by sending it to him at the email addresses:

(a)    dalecrossoz@yahoo.com; and

(b)    titancomplaint@bewareoftitangarages.com.

2.    Costs reserved.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

EDELMAN J:

Introduction

1    This is an application for substituted service by Titan Enterprises and two related companies (which I will refer to collectively as Titan Enterprises) against the first respondent, Mr Cross. Titan Enterprises has brought this proceeding against two respondents, Mr Cross and Dr Harmon (the latter as both a primary wrongdoer and as an accessor or joint tortfeasor). The proceeding concerns a website, described as the “Beware of Titan Garages” website, which Titan Enterprises says is operated by the respondents.

2    Titan Enterprises alleges that Mr Cross and Dr Harmon have (i) infringed its copyright, (ii) infringed its registered marks, (iii) committed the tort of injurious falsehood, (iv) engaged in misleading or deceptive conduct, and (v) made false or misleading representations. Titan Enterprises seeks various remedies including injunctions, damages, additional damages, exemplary damages, interest, and costs.

3    Although Titan Enterprises has been in contact with Dr Harmon and his solicitors, it has failed to discover the physical address for service of Mr Cross. Despite apparently exhaustive searches it has only discovered two email addresses for Mr Cross. It does not know of his physical location or physical address for service. It is unaware of his physical appearance. It is appropriate that Titan Enterprises have leave to serve documents in this proceeding upon Mr Cross by substituted service.

The attempts by Titan Enterprises to discover Mr Cross’ physical address

4    Titan Enterprises has made numerous attempts to discover Mr Cross’ physical address so that it can serve Mr Cross. The attempts have involved the following.

5    First, on 11 November 2014, Titan Enterprises conducted a search of the ‘Whois’ database to discover who owns the domain name of the Beware of Titan Garages website, and where it is hosted. But the registration of the domain name was via a privacy protection service.

6    Secondly, in December 2014 Titan Enterprises corresponded with the privacy protection service listed as the contact address for the Beware of Titan Garages domain name. Titan Enterprises sent “cease and desist” letters addressed to Mr Cross, care of the privacy protection service. No response was received.

7    Thirdly, Titan Enterprises corresponded with Davies Collision Cave, the law firm which represented Mr Cross in an action filed by Titan Enterprises with the World Intellectual Property Organisation Arbitration and Mediation Centre (WIPO) in relation to its use of the Beware of Titan Garages domain name.

8    On 2 February 2016, Titan Enterprises wrote to the law firm explaining the current dispute, and requesting that the firm provide full identifying particulars of Mr Cross. Solicitors at Davies Collision Cave replied saying that they had forwarded the correspondence to Mr Cross, but that their instructions were limited to acting on behalf of Mr Cross in relation to the domain name dispute.

9    Fourthly, Titan Enterprises corresponded with Dr Harmon on numerous occasions. Dr Harmon has had extensive correspondence with Mr Cross for over 18 months. On 5 February 2016, a solicitor for Titan Enterprises wrote to Dr Harmon requesting that Dr Harmon provide full particulars of Mr Cross’s identity. No substantive response was received.

10    Fifthly, Titan Enterprises says that it conducted its own private enquiries to ascertain the identifying particulars of Mr Cross without success.

11    Sixthly, on 29 April 2016, Titan Enterprises conducted an oral examination of Dr Harmon over which I presided. Dr Harmon had paid the legal fees for Mr Cross’ WIPO domain name dispute with Titan Enterprises. Dr Harmon had also provided a statutory declaration in support of Mr Cross’ claim in that dispute.

12    Counsel examined Dr Harmon for nearly an hour concerning the manner in which he had communicated with Mr Cross. Dr Harmon’s evidence was that he had only ever contacted Mr Cross, and been contacted by Mr Cross, by two email addresses: dalecrossaus@yahoo.com and titancomplaint@bewareoftitangarages.com. Dr Harmon said that he had no telephone number for Mr Cross. He said that he had no fax number for Mr Cross. He said that he had never met Mr Cross. He said that he had no physical address for Mr Cross.

13    During the oral examination, Dr Harmon was also asked to retrieve emails that he had deleted. He has since advised that he has been unable to retrieve any deleted emails from his mail server which would assist in identifying Mr Cross.

Application of the rules concerning substituted service

14    Titan Enterprises seeks orders for substituted service of Mr Cross under r 10.24 of the Federal Court Rules 2011 (Cth). Titan Enterprises seeks leave to effect personal service of any document on Mr Cross by sending it to him at two email addresses which the applicant believes are used by Mr Cross.

15    Rule 8.06 of the Federal Court Rules requires that originating documents be served on each respondent personally. If the respondent is an individual, the documents are to be served on that individual by leaving it with them: r 10.01.

16    Rule 10.24 of the Federal Court Rules provides for substituted service:

Substituted service

If it is not practicable to serve a document on a person in a way required by these Rules, a party may apply to the Court without notice for an order:

(a)    substituting another method of service; or

(b)    specifying that, instead of being served, certain steps be taken to bring the document to the attention of the person; or

(c)    specifying that the document is taken to have been served:

(i)    on the happening of a specified event; or

(ii)    at the end of a specified time.

17    In Electrolux Home Products Pty Ltd v Delap Impex Ltd [2013] FCA 600; (2013) 103 IPR 421, 432-433 [76], Katzmann J explained that service which is “not practicable” within the rule does not require an applicant to prove that it is impossible or futile to effect personal service. The intention of the rule was unlikely to have been to require that service must be effected personally, even if it was extraordinarily difficult to do so, provided that it was possible. This is so despite the etymology of “impracticable” in contradistinction to “impractical” (see Humane Society International Inc v Kyodo Senpaku Kaisha Ltd [2007] FCA 124 [8]-[13] (Allsop J)). As Katzmann J observed, this approach has been taken in other decisions: Statewide Secured Investments Pty Ltd v Tarrant [2011] FCA 1067 [7]-[9] (Flick J); Speedo Holdings BV v Evans [2011] FCA 1089 [12] (Flick J); British American Tobacco Australasia Limited v Taleb (No 1) [2012] FCA 1065 [29] (Dodds-Streeton J).

18    In this case, the evidence overwhelmingly supports the conclusion that it is impracticable for Titan Enterprises to serve any document personally upon Mr Cross. Titan Enterprises has no realistic way of discovering where Mr Cross is physically located. The appropriate order is that until the Court orders otherwise, Titan Enterprises has leave, pursuant to r 10.24 of the Federal Court Rules, to effect personal service of any document in this proceeding on Mr Cross by sending it to him at the two email addresses which he is known to have used. If Mr Cross appears in this proceeding then it may be appropriate for this order to be revised.

Conclusion

19    Orders for substituted service by service upon Mr Cross’ email addresses should be made.

Associate:    

Dated:    7 June 2016