Michael Ford (post until Oct. 31/18)
Intellectual Property

Case an authority on domain name passing off

Registering and using a domain name that is similar to a competitor’s for the sole purpose of redirecting traffic to one’s website is a dirty practice without a doubt, but like many other Internet offences, it does not always fit within traditional causes of action, Toronto intellectual property and trademark lawyer John Simpson writes in Lawyers Weekly.  Read Lawyers Weekly

Dentec Safety Specialists Inc. v. Degil Safety Products (1989) Inc. [2012] O.J. 3840 is the latest Canadian authority to consider when the use of a domain name exclusively for “redirect” purposes will constitute passing off, writes Simpson, noting it almost certainly becomes the leading authority, among very few, on “the tort of domain name passing off” in Canada.

In Dentec, the plaintiff and defendant were direct competitors, selling industrial safety products, the article says. For more than five years, the plaintiff had operated a website at www.dentecsafety.com and had displayed this URL on its advertising material. The defendant, meanwhile, advertised and sold its own products on a website at www.degilsafety.com, the article continues.

In February 2009, the defendant registered the domain name dentecsafety.ca (i.e. the plaintiff’s domain name, with a .ca instead of a .com) and set it up so that Internet users who typed it into a browser would be directed to the defendant’s website without notice, writes Simpson, principal of Shift Lawbr />The defendant maintained that he was lawfully entitled to engage in this “common practice” and did so for five months before being sued by the plaintiff for passing off, the article states. Shortly thereafter, the defendant surrendered the dentecsafety.ca domain name, making an injunction (or a proceeding under the Uniform Dispute Resolution Policy to cancel or transfer the domain name) moot, writes Simpson, noting the plaintiff proceeded with the action and was successful in obtaining judgment for $10,000, as sought.

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