Court applies trademark law to domain name dispute

Canada

In ITV Technologies Inc v WIC Television Ltd, the Federal Court of Canada has used conventional trademark principles to dismiss a claim that a domain name infringed a registered trademark. During the trial the court allowed the use of the Internet to provide evidence that otherwise would not have been presented.

WIC owns and operates Canadian television station ITV. The company also owns the Canadian-registered trademark ITV and a website with the domain name 'itv.ca'. ITV Technologies operates an internet business, which provides on-demand video streaming and uses the domain name 'itv.net'. WIC challenged ITV Technologies' use of the ITV Technologies name and the 'itv.net' domain name.

The court allowed the Internet to be used at the trial for:

  • performing demonstrations;

  • cross-examining witnesses; and

  • retrieving electronic versions of paper documents.

In justifying such use, the court held that (i) when considering the content of a website, the original provides better evidence than a printed copy, and (ii) the official websites of well-known organizations can provide reliable evidential information.

The court dismissed WIC's claims against the 'itv.net' domain name under the Trademarks Act, which requires a multi-factor confusion analysis. The court found there to be no likelihood of confusion on a variety of grounds, including that (i) the parties' activities, while related, were not similar, and (ii) they used different media and were in different geographical locations. In addition, WIC's registration of the ITV trademark did not entitle it to monopolize domain names with the 'itv' prefix.

The court's decision implies that special considerations and different legal rules are not necessary for resolving trademark disputes involving domain names. This is consistent with the opinion of the Ontario Court of Appeal, which stated that conventional trademark principles apply to the use of trademarks on the Internet.

Bradley J Freedman, Borden Ladner Gervais LLP, Vancouver

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