A recent decision of the Ontario Court of Appeal1 has
confirmed that proceedings related to the ownership and transfer of
domain names may be brought in the provincial courts, or under the
relevant domain name dispute resolution policies.
The case involved a dispute between Tucows.Com Co. and Lojas
Renner S.A. over the domain renner.com.
Tucows is a Canadian company with its principal offices in
Toronto. In 2006, it purchased the domain renner.com, along with
over 30,000 other surname domain names. Tucows uses these surname
domain names to offer personalized email services.
Renner is a Brazilian company that operates retail department
stores, and a subsidiary of JC Penney. It owns the registered
trademark RENNER in Brazil and other countries.
Renner commenced proceedings under the Uniform Domain Name
Dispute Resolution Policy (UDRP) to compel the transfer of the
renner.com domain. It alleged that Tucows was using the domain in
Tucows did not defend the administrative proceeding, rather
asked that the proceeding be suspended so that the issues could be
resolved in the Ontario provincial courts. That request was
granted. In making its decision, the panel concluded that: the
facts were similar to other UDRP decisions on the same issue; the
parties could afford the cost of litigation; there was no great
urgency to having the dispute resolved; the issues were not
straightforward; and a court would be in a better position to
decide the critical issue of whether the domain was registered and
used in bad faith. Tucows then sued Renner in the Ontario court. In
its claim, it asked for declarations that Tucows has rights and
legitimate interests in the domain; that the registration of
renner.com was not in bad faith; and that Renner is not entitled to
the transfer of the domain. Because Renner was located in Brazil,
Tucows relied on Rule 17.02(a), which allows for service outside
the province of a claim that relates to real or personal property
Renner moved to dismiss the action on the basis that the Ontario
courts lacked jurisdiction to determine the issues. In considering
the motion, the Court was required to determine whether the dispute
should have remained with the administrative panel; whether domain
names are property; and whether that property is resident in
UDRP Rules are an Alternative to Litigation
Ontario Courts are unlimited and unrestricted in determining
civil law matters unless the cause of action is specifically
excluded by statute or an arbitration agreement between the
parties. The UDRP rules do not preclude litigation as an option to
resolve a domain name dispute. The Court referred to United States
decisions which concluded that the UDRP proceedings were never
intended to replace formal litigation, but merely to provide an
additional forum for dispute resolution. The Court has jurisdiction
to hear the claim.
It is expected that courts would reach the same conclusion if
asked to consider a .ca domain name dispute. The CIRA Domain Name
Dispute Resolution Policy for .ca domains also allows the parties
to submit the dispute to a judicial proceeding, arbitration or
While a proceeding under the UDRP or CIRA policy can be
relatively fast and inexpensive, there are advantages to an action.
In a dispute resolution policy, there is no positive obligation to
produce relevant documents, no discovery, no crossexamination on
materials filed and no oral hearing. Also, the powers of the panel
are limited to the transfer of the domain, whereas a court can
award transfer of the domain, plus damages, declaratory and
injunctive relief and legal costs.
A Domain is Property
Since the Court had jurisdiction over the cause of action, the
next issue was whether the domain was personal property.
After a detailed review of the law relating to property rights, the
Court concluded that property can be described as a bundle of
rights that someone can own; it includes something intangible that
has been conceived by the mind, and can be enforced against others.
A domain name fit this description, and was found to be personal
The Property was Located in Ontario
On the facts of the case, the domain name was also considered to
be property in Ontario. Just because a domain is intangible does
not mean that it cannot be located in a specific place. Because
Tucows had maximum contacts in Ontario, the domain was considered
to be located there. Renner's motion to set aside the claim was
The merits of the case are yet to be determined, however this
decision provides clear guidance as to the manner in which domain
name disputes may be initiated in Canada.
1. Tucows.Com Co. v. Lojas Renner S.A. 2011 ONCA
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