Law Society lays down the law to domain name registrant

Canada

In Law Society of British Columbia v Canada Domain Name Exchange Corporation, the Supreme Court of British Columbia has upheld the plaintiff's claim and has issued a permanent injunction preventing the defendant from using the domain names 'lawsocietyofbc.ca' and 'lsbc.ca'.

Domain Name Exchange Corporation (DNEC) registered 'lawsocietyofbc.ca' and 'lsbc.ca', and redirected traffic to pornographic sites and to a site containing political commentary. The Law Society of British Columbia sued for passing off. DNEC argued that each domain name had another meaning. As one example, it stated that LSBC was an acronym for "love sites by category".

On a motion for an interim injunction, the Supreme Court of British Columbia held that the Law Society had established a fair case to be tried and that it was favoured by the balance of convenience. The court held that the use of the domain names constituted passing off, and made an interim order restraining DNEC from transferring or otherwise dealing with the domain names.

On a subsequent application for an interlocutory injunction, the court restrained DNEC from selling, transferring, disposing of, pledging or otherwise encumbering or dealing with, or from using, the domain names. The court held that the mere registration of a domain name with a false association or representation constitutes passing off. The court held that it was unnecessary for the Law Society to establish irreparable harm since the balance of convenience was in its favour.

At full trial, the court held that the Law Society had substantial goodwill in its name and that the registration and use of the domain names created a misrepresentation that would result in a likelihood of confusion, even if there was no evidence of actual confusion. Although there was no requirement to determine DNEC's intention, the court found that it had intended to make the representation.

Accordingly, the court made the injunction permanent, although it did not order the transfer of the domain names. It also ruled that damage was presumed due to the plaintiff's loss of control over its reputation. Even though no actual damage was proved, the court awarded general damages of C$4,000 and costs.

Sheldon Burshtein, Blake Cassels & Graydon LLP, Toronto

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