The Ontario Superior Court of Justice recently ruled that the
elements of the tort of passing-off in the context of internet
domain names were established in Dentec Safety Specialists Inc. v. Degil Safety
Products Inc. Although this is not the first case to
consider passing off in the context of domain names, it sets out a
useful summary of principles gleaned from the authorities.
Dentec Safety Specialists Inc. ("Dentec") alleged that
Degil Safety Products (1989) Inc. ("Degil") wrongfully
passed itself off as Dentec by registering and using the domain
name, dentecsafety.ca, knowing that Dentec's own web
address was dentecsafety.com and by deliberately redirecting
potential web traffic to Degil's website at
Justice Kenneth L. Campbell applied the three-pronged test for
the tort of passing off as set out by the Supreme Court of Canada
in Ciba-Geigy Canada Ltd. v. Apotex Inc., namely
that there was: (1) the existence of goodwill; (2) the deception of
the public due to misrepresentation; and (3) actual or potential
damage to the plaintiff.After listing key Canadian, U.S. and U.K.
cases, Justice Campbell summarized the important principals gleaned
from those authorities as follows and the significant points
included the following:
Likelihood of Confusion: the likelihood of potential confusion
is measured by the "ordinary average customer" shopping
for the products sold;
Factors to Consider: in considering the likelihood of
confusion, all of the circumstances should be considered (and a
number of specific examples are listed) and the relative importance
of each will depend on the circumstances of the case;
Degree of Similarity to Competitor's Name: the degree of
similarity between the defendant's domain name and the
plaintiff's business name "will always be an important
Similarity of Products Sold: the similarity and relatedness of
the goods being sold is another key factor in assessing the
likelihood of confusion among customers;
Initial Interest: "the confusion which the tort of
passing-off seeks to avoid includes 'initial interest
Intention of the Defendant: the defendant need not have
intentionally sought to confuse or mislead the public but such an
intention "will provide strong evidence of customer
The Court found that all three elements of the tort of passing
off were established in this case, and awarded Dentec $10,000 in
compensatory damages but no punitive damages.
This case provides a useful analytical framework and confirms
that a passing off claim is a viable option to consider when
dealing with a confusingly similar domain name, the other option
being proceedings under the applicable dispute resolution policy,
such as ICANN's Uniform Domain-Name Dispute Resolution Policy
(if the domain name in issue ends in one of the many gTLDs
accredited by ICANN, including .com, .net and .org) or the
Name Dispute Resolution Policy (if the domain names ends in
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