Domain Names – How to Get Them Back
The Ontario Superior Court recently released a judgment about recovering domain names, South Simcoe Railway Heritage Corporation v. Wakeford 2011 ONSC 1234, in this case a .com name rather than .ca domain name.
Someone who had been active in a voluntary organization registered a domain name for the organization and later transferred it into his own name. He also changed all the registration information settings to private so no one, including the organization, could track who was responsible for the site.
The plaintiff organization brought actions in ‘detinue sur trover’ (a new cause of action for me after all these years, though I had heard of each of the components), wrongful conversion, misappropriation of intellectual property rights, and breach of trust. The first three failed because they were out of time. The Court went through what the plaintiff knew when, and thus when it had knowledge of a complete cause of action that started time running.
However, the limitation period applicable to breach of trust was less clear and needed a trial of issues of mixed fact and law.
What other legal means do you use to get back a domain name (recognizing that you would not miss a limitation period…)?
The court finished on a note that is mysterious to me. It refers to the ICANN Uniform Domain-Name Dispute-Resolution Policy that applies to .com names. Apparently the defendant argued that the existence of the UDRP ousted the jurisdiction of the Superior Court. My understanding of the UDRP is that it does not do so. However, the court refers to a statute – maybe the judge thought that the URDP had statutory backing. If this text makes sense to you, perhaps you can explain it [at para. 24]:
Although this was not part of the moving party’s motion, the final point argued by the parties was whether this court has jurisdiction to grant the declaration sought in the claim with respect to ownership of the domain name and the intellectual property rights, as well as a mandatory order directing the defendants to convey the domain name to the plaintiffs. While the plaintiff may be correct that this claim is not within the jurisdiction of the Uniform Domain Name Dispute Resolution Policy prescribed by the Internet Corporation for Assigned Names and Numbers, this court is not convinced that this aspect of the claim should be dismissed for want of jurisdiction pursuant to rule 21.01(3)(a). The actions of the defendants may have to be measured in relation to that statute, to which this court was not referred, that governs the ownership of domain names if such legislation exists. It may be that proprietary rights in a domain name, like copyright and trademark, is a creature of statute as opposed to tort and property law, but the appropriate material was not placed before this court to make a determination of the question at issue.
In particular, it is not true to say, is it, that “proprietary rights in a domain name, like copyright and trademark, is [sic] a creature of statute as opposed to tort and property law”?
[hat tip: Tim Rattenbury]
“Detinue sur trover”… This is probably just good old detinue, plain and simple, one of the chattel torts: conversion, detinue, trespass. There were once “flavours” of detinue, which is a remedy that says, in effect: you’ve got something of mine legitimately; but now I demand it back; and your refusal constitutes a wrong. Thus, detinue sur trover was founded on the fact or fiction that you’d found my chattel (and now wrongfully refused to return it), detinue sur bailment upon the fact or fiction that that you were my bailee and wrongfully refuse etc. etc. I wonder if what was going on here was an attempt to avoid the consequences of the Limitations Act. A cause of action arises when there’s a wrongful act. The wrongful act of conversion occurs when you exercise dominion over my good (domain name, in this case); but the wrong in detinue occurs when you refuse my request for the return of my good, typically at a later time. The question would be whether an action in detinue would lie once there’d been a prior conversion in fact. It would seem contrary to the point of the statute to let a plaintiff ignore a known wrong and retain the freedom to prompt a new wrong at a time of his choosing.