BC Law Society wins round one in trademark fight

Canada

In its decision in Law Society of British Columbia v Canada Domain Name Exchange Corporation, the Supreme Court of British Columbia issued a pre-trial injunction prohibiting the use or transfer of certain domain names that allegedly violate the law society's common law trademark rights. The court followed previous authorities holding that the registration and use of a domain name that incorporates another party's trademark may constitute unlawful passing off.

Canadian Domain Name Exchange Corporation (CDNE) registered the domain names 'lawsocietyofbc.ca' and 'lsbc.ca' and used them for pornographic websites. The law society sued, claiming that CDNE registered and used the domain names in order to divert internet users seeking to contact the law society website to other websites resulting in income for CDNE.

CDNE defended its registration of the domain names on the basis that they refer to an intended listing of barristers called the Law Society of Barristers' Categories. Nevertheless, CDNE ultimately conceded that the domain names were being used to increase traffic to other sites, which resulted in income for CDNE.

Following the decision of the Supreme Court of British Columbia in British Columbia Automobile Association v The Office and Professional Employees International Union and the English Court of Appeal decision in British Telecommunications plc v One In A Million Ltd, the court held that there was a good argument that CDNE's conduct constituted the tort of passing off because (i) the company's registration of the domain names falsely represented that it was associated or connected with the law society, and (ii) its use of the domain names would confuse members of the public and cause them to think that the websites have some connection with the law society. Thus, the court decided that the balance of convenience favoured the issuance of a pre-trial injunction restraining CDNE from using or transferring the domain names until the conclusion of the trial.

Bradley J Freedman, Borden Ladner Gervais LLP, Vancouver

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