Passing-off – that is, making your product look like someone else’s or suggesting it has their endorsement – is as old as the hills, but its application to the digital age is pretty new. It’s helpful, then, that Kenneth L Campbell J of the Ontario Superior Court distils the applicable principles from such case law as there is in Dentec Safety Specialists Inc v Degil Safety Products (1989) Inc, 2012 ONSC 4721. (A case where the defendant was alleged to have passed off the domain name for his business as somehow connected to that of his brother.) The factors to consider in assessing a passing-off case involving a domain name are as follows: (1) how likely is the average consumer to be misled? (2) how similar are the domain names and the products being sold? (3) how strong is the plaintiff’s business name in the marketplace? (4) what is the value of the product? (5) how much care and attention is reasonably expected of consumers who purchase the product? (6) did the defendant intend to confuse people (not dispositive, but indicative of customer confusion)? (7) were members of the public actually confused? (8) do the plaintiff and defendant regularly sell their products through the same channels and in the same market? (9) what is the level of ‘initial interest internet confusion’ when web shoppers look for the plaintiff’s site but are directed to the defendant’s. Basically what you’d consider in a more traditional case, but it’s good to have some authority directly on point. On the facts, the defendant had clearly misrepresented a connection with the plaintiff’s business, had caused confusion over who was selling the products and it was likely that the plaintiff would suffer damages as a result. The plaintiff won his case.
[Link available here].