Archive for the ‘cybersquatting’ Category

Supreme Court of Canada Denies Leave in Domain Name Dispute Case

May 24, 2012

Today, the Supreme Court of Canada denied application for leave to appeal in Lojas Renner S.A. v. Tucows.Com Co. (Ont.) (Civil) (By Leave) (34481) Coram: Deschamps / Fish / Karakatsanis.

The dispute was over the right to the internet domain name “renner.com”. The applicant, Lojas Renner S.A., operates a number of retail department stores in Brazil and owns the registered trademark “Renner”, while the respondent, Tucows.com, is a Canadian domain name registrar which purchased the domain name “renner.com” in 2006 and is the registrant of that domain name with the internationally-recognized non-profit organization, the Internet Corporation for Assigned Names and Numbers (“ICANN”).   Lojas Renner S.A.’s motion to set aside service ex juris of  Tucows.com statement of claim and to stay the action for want of jurisdiction was granted. The Ontario Court of Appeal unanimously allowed Tucows.com’s appeal. The Court of Appeal for Ontario held that Ontario had jurisdiction over the dispute, finding that a domain name is personal property and that presence-based jurisdiction is established if the plaintiff’s servers are physically located in Ontario.

Lojas Renner S.A. unsuccessfully sought leave to appeal on the following issues:

  • Whether the Court of Appeal erred in stating that the policy of the UDRP is to “refer” legitimate disputes to the Court?
  • Whether the Court of Appeal erred in holding that the Superior Court of Ontario’s jurisdiction was “unlimited and unrestricted”?
  • Whether the Court of Appeal erred in making no assessment of whether the claim before it was justiciable?
  • Whether the Court of Appeal erred in determining in the abstract that a domain name was “personal property in Ontario”?
  • Whether the Court of Appeal erred in failing to consider whether it accords with principles of order, fairness and comity to read “intangible” into Rule 17.02 – Rules of Civil Procedure, R.S.O. 1990, Reg. 194, Rules 17.02(a), 17.06(1).

I previously wrote a case comment about this important internet jurisdiction case: “The Internet as Property: The Implications of Tucows.Com Co. v. Lojas Renner S.A., and SOPA”, The Globetrotter, OBA International Law Section Newsletter, Volume 16, No. 1 – December 2011 [pdf].

Ontario appeal court asserts jurisdiction; rules that a domain name is personal property

August 5, 2011

The Court of Appeal for Ontario in Tucows.Com Co. v. Lojas Renner S.A., 2011 ONCA 548 has issued a ground-breaking decision on domain names and personal property rights.

The unanimous judgment written by Justice Weiler (Simmons and Epstein JJ.A. concurring) merits close reading for those practicing in the area of internet law and jurisdiction. (more…)

INTA Report on Substituted Service of Process by Electronic Mail: Request for Comments

April 8, 2010

 The Internet Committee of the International Trademark Association (www.inta.org) seeks comments on its recently published report entitled: Substituted Service of Process by Electronic Mail: Achieving Notice on Fictitious Owners of Commercial Websites for Access to Judicial Remedies.

The INTA Internet Committee proposes:

“adoption of legislative and treaty amendments providing that in a civil action arising from the advertising or sale of goods and services via a fictitiously owned commercial website, where the corresponding domain name is registered through a proxy service or by means of materially false or deficient contact data, service of process by electronic mail on the e-mail address provided in the Whois record associated with the domain name for that website shall be effective against the named registrant without the need for a court order allowing for substituted service.”

The INTA Report:

“…considers the prospects for streamlining the process necessary before an aggrieved party may undertake substituted service of process on the hidden owner of a commercial web site by electronic mail. The Subcommittee proposes that legislative and treaty amendments should provide that, in a civil action arising out of the advertising or sale of goods and services via a fictitiously owned commercial website, service of process by electronic mail on the e-mail address provided in the Whois record associated with the domain name for that website shall be effective against the named registrant without the need for a court order allowing for substituted service.  

In September of 2009, the subcommittee’s proposal was presented to the INTA Policy Development & Advocacy Executive Council and the INTA Board of Directors Executive Committee, and in November 2009 to the INTA Board of Directors. Although in general the proposal was favorably received, the Committee was encouraged to consult with other stakeholders on three key questions in order to develop the recommendations further and prior to INTA taking a position on the issue:  

1) Should the recommendation be limited to trademark infringement and cybersquatting cases? (To be clear, the Working Group and the Whois Subcommittee do not, in this report, recommend such a limitation because the recommendation is already limited in several ways discussed herein. Further, limiting it to trademark cases would provide preferential treatment for trademark owners without a compelling policy basis for doing so, although the exercise of restraint is admirable.) 

2) What effect would the proposal have on non-trademark claims involving fictitiously owned commercial web sites? 

3) Would other legal organizations and stakeholders support and/or have changes to the proposal?

The deadline of March 15, 2010 appears to have been extended. Send your comments to: eservicereport@inta.org


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