Introduction

On March 27, 2017, the Court of Appeal for Ontario released its endorsement in Boaden Catering Limited v. Real Food for Real Kids Inc.,1 which concerns a dispute over domain name registrations. The upshot of the decision is that a domain name need not be identical to a complainant’s mark for a complainant to establish a right and legitimate interest in respect of the domain name. It is sufficient if the disputed domain name is “confusingly similar” to a mark in which the complainant had and continues to have rights.

Background

This case was an appeal from a successful motion for summary judgment dismissing an application brought by the appellant, Boaden Catering Limited (Boaden), for a declaration that it is the lawful owner of certain domain names. Boaden appealed on a number of procedural grounds concerning the motion judge’s denial of its requested adjournment of the motion. However, the crux of the merits portion of the appeal concerned the requirements to establish that an applicant is the lawful owner of a domain name.

The proceedings arose out of a dispute about website domain names between Boaden and the respondent, Real Food For Real Kids Inc. (RFRK), competitors in the market for healthy children’s catering in and around Toronto. In July 2014 and December 2014, Boaden registered a “.com” domain name (realfoodforrealkidss.com) and three “.ca” domain names (realfoodforkids.ca, rfrk.ca and realfoodlunchclub.ca), which were identical or similar to names that RFRK claimed to have used in its business continuously since 2005. In December 2014, Boaden registered RFRK and RFRK.CA as business names under Ontario’s Business Names Act, R.S.O. 1990, c. B.17.

In March 2015, RFRK submitted a complaint under the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP) concerning Boaden’s registration of the domain name “realfoodforrealkidss.com”. On May 5, 2015, an arbitrator found that Boaden had no legitimate interest in this domain name, which it had registered in bad faith.

On May 7, 2015, RFRK submitted a complaint under the Canadian Internet Registration Authority (CIRA) Domain Name Dispute Resolution Policy concerning Boaden’s registration of the three “.ca” domain names. On July 8, 2015, the CIRA arbitrator found that Boaden had no legitimate interest in the disputed “.ca” domain names, and that the domain names had been registered in bad faith. The arbitrator ordered that the registration of the “.ca” domain names be transferred from Boaden to RFRK.

However, on June 2, 2015, Boaden commenced an action in the Superior Court against RFRK and its principal for a variety of relief, including a declaration that Boaden is the lawful owner of the disputed domain names, and damages for passing off, defamation and theft of trade secrets. In accordance with the CIRA policy, the order to transfer the registration of the “.ca” domain names to RFRK was suspended while the court proceedings were pending.

The motion judge found that Boaden registered the domain name rfrk.ca in bad faith with a view to denying RFRK the ability to use the name. He concluded, among other things, that Boaden had commenced litigation to intimidate a smaller business competitor and that it had acted in bad faith.

It is useful to note, by way of background, that neither the UDRP nor the CIRA arbitration rules provide for an appeal and both contemplate related court proceedings. For example, clause 4(k) of the UDRP policy permits a party to commence court proceedings regarding the same complaint that is the subject of the ICANN proceeding provided that any such court proceedings are commenced either before the ICANN proceeding is commenced or after the ICANN proceeding is concluded.2 Further, the CIRA rules also state that the availability of a proceeding before a CIRA arbitrator does not prevent either party from submitting a dispute between them to a judicial or administrative proceeding, arbitration, mediation or any other procedure at any time for independent resolution.3

Test for establishing a legitimate interest in a domain name

On appeal, Boaden argued that the motions judge erred in failing to expressly apply the “test” in Black v. Molson Canada,4 which Boaden characterized as the proper authority relating to domain name registrations. In that case, the court adopted the requirements of the ICANN Start-up Trademark Opposition Policy (STOP) to determine an application for a declaration that the applicant owned a certain domain name. As the court explained in that case, at that time, paragraph 4(a) of the STOP required that the complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

  1. The domain name is identical to a trademark or service mark in which the complainant has rights;
  2. The respondent has no rights or legitimate interests in respect of the domain name; and
  3. The domain name has been registered or is being used in bad faith.

Boaden argued that the motion judge did not consider whether the domain names it registered were identical with a mark in which RFRK had rights, and did not consider evidence demonstrating that Boaden had rights and legitimate interests in respect of the domain name.

The court rejected this argument. In Black, the court referred to the criteria for directing the transfer of a .com domain name, as articulated in the ICANN policies at the time, which required that a domain name be identical to the complainant’s mark. However, the motion judge and the Court of Appeal considered the fact that the underlying ICANN rules had changed since the Black decision in 2002 – fifteen years ago. While, as the court explained, the current criteria are substantially the same under both the ICANN policies and the CIRA Dispute Resolution Policy governing disputes over .ca domain names as they were in 2002, it is now sufficient if the disputed domain name is “confusingly similar” to a mark in which the complainant had and continues to have rights. They need not be identical.5 As the motion judge applied the updated test set out in the ICANN policies, there was no error in the reasons.

This case is important in that it shows that the courts are willing to keep pace with the updated ICANN and CIRA policies, rather than rely solely on tests articulated and adopted in older case law. These ICANN and CIRA policies remain relevant and should be consulted by those registering domain names.