Domain Name Is Property in … All of Canada

The Supreme Court of Canada has refused leave to appeal the decision of the Ontario Court of Appeal in Tucows.com v Lojas Renner 2011 ONCA 548

That decision had held that Tucows.com could bring an action for a declaration of its rights to a domain name in an Ontario court, on the ground that the dispute involved “real or personal property located in Ontario”. In this case, Tucows.com was the registrar and the owner of the domain name Renner. com. The other party was a Brazilian company that owned the trade mark ‘Renner’ (though not apparently in Canada.)

The Court of Appeal had to consider a number of issues to come to its conclusion. It strikes me as well written and well controlled. It dealt with the relationship between a local lawsuit and a proceeding under the WTO’s UDRP (since Renner had started a UDRP proceeding before Tucows’ action in Ontario)(para 26 – 31), the nature of a licence as property (para 41 – 66), the application of the rules of jurisdiction in a declaratory action (para 34 – 35), and others.

The Court went to first principles about what ‘property’ is – a number of relationships about which the law will support claims. Which relationships and which claims are discussed in the judgment.

It also decided that when the domain name registrant and the registrar were in Ontario, the property in the name were in Ontario, at least for the purpose of supporting an action under the Ontario rules.(para 67 – 72)

Presumably the decision of the Supreme Court of Canada not to give leave is a strong indication that this reasoning is valid across the country, at least on the property issue and at least in common-law jurisdictions. How the rules of practice may vary is a different question, though the Ontario CA did deal with higher-level issues like ‘real and substantial connection’ (para 73) as well as with the wording of Ontario’s rules.

Does this sound right to you? Does it change the advice you might give to a client about a domain name, and if so, how? Is a dispute in Quebec likely to come to a different conclusion on the property question?

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Comments

  1. Presumably the decision of the Supreme Court of Canada not to give leave is a strong indication that this reasoning is valid across the country, at least on the property issue and at least in common-law jurisdictions

    No more (or less) valid than if leave hadn’t been sought.

    David

  2. David Cheifetz

    I should have replied with more than I did, since we have readers who (quite reasonably) see no need to know the basis upon which the Supreme Court of Canada grants leave, and don’t know that the SCC does not explain why it did or did not grant leave but merely says yes or no to applications for leave –

    So, for those others, not John –

    The fact that the decision in respect of which leave to appeal is sought is right or wrong, in the particular case is, ultimately, irrelevant. The issue has to be one that the Supreme Court thinks is of sufficient importance to Canadian law generally that it ought to consider the law involved. That means the SCC may grant leave even where it agrees with both the result and the analysis, because it wants to say something about that law.

    So, when those of us who (sometimes) have to dress up in costume to explain why something should or should not happen to our clients tell a judge that the Supreme Court refused to hear the appeal of a lower court decision, that’s because we want the judge(s) to know the case we’ve referred to wasn’t overruled by the Supreme Court on appeal.

    But, to complicate things, that doesn’t tell the judges whether or not there’s another earlier (or worse later) Supreme Court case which is or might be inconsistent with the proposition we want the judge(s) to accept. If there’s a reasonable argument there is, you’d better be prepared to deal with it or risk embarrassment (at least).

    DC