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 degilsafety.com.
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 consideration;”
- 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 confusion’”; and
- 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 confusion”.
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 CIRA’s Domain Name Dispute Resolution Policy (if the domain names ends in .ca).