Authority of the Court to order Transfer of Domain Names

Getting a Court to order the transfer of a domain name has been a problem. Many Judges of the Federal Court have claimed that they are without jurisdiction to order the transfer of a domain name.  Their rationale has been that domain names are “personal property”, which, under the division of powers in the Canadian Constitution, is within the “Property and Civil Rights” jurisdiction of the Provinces.   Unfortunately, many Supreme Court Justices in the Courts of the various Provinces have also claimed that they are without jurisdiction.  The result has been unsatisfactory to Trademark Owners.  I was personally involved in a case in the Supreme Court of British Columbia, in which the presiding Justice hearing the case gave us Judgement but refused to order the transfer of a domain name when the defendant undertook “not to renew” the domain name.  My client was forced to monitor the expiry of the domain name, wait for the reinstatement period to expire and then, potentially, compete with others to acquire the domain name after it expired.  This ridiculous result is not an isolated example.  Until the recent Federal Court of Appeal decision in Michaels v. Michaels Stores Procurement Company, there was a vacuum.  The Federal Court of Appeal found that when a domain name is a “mechanism” used to infringe a Trademark, the domain name became an “instrument of confusion in the marketplace”.  Further, the Court of Appeal held that the jurisdiction to order delivery up of the domain names in question (e.g. michaels.ca) is firmly rooted in section 53.2 of the Trade-marks Act, which gives the Court a wide discretion to grant the remedies it considers necessary to give effect to rights that have been infringed; and in subsection 20(2) of the Federal Courts Act which gives the Court jurisdiction to order any appropriate remedy known to common law or equity.  This decision is good news for Trademark owners and will allow better policing of the internet, at least for .ca domain names under Canadian court jurisdiction.