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[registrars] Canadian Court applies trademark law to domain name dispute
- To: Registrars Constituency <registrars@xxxxxxxx>
- Subject: [registrars] Canadian Court applies trademark law to domain name dispute
- From: "Robert F. Connelly" <rconnell@xxxxxxxxxxxxx>
- Date: Wed, 10 Dec 2003 07:21:17 -0800
- Sender: owner-registrars@xxxxxxxxxxxxxx
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Court applies trademark law to domain name dispute <br>
<img src="cid:5.2.1.1.2.20031210071834.0bb13810@206.16.184.129.0" width=3 height=1 alt="501fad2.jpg"><br><br>
In
<a href="http://decisions.fct-cf.gc.ca/fct/2003/2003fc1056.html";><i>ITV
Technologies Inc v WIC Television Ltd</a></i>, the Federal Court of
Canada has used conventional trademark principles to dismiss a claim that
a domain name infringed a registered trademark. During the trial the
court allowed the use of the Internet to provide evidence that otherwise
would not have been presented.<br><br>
WIC owns and operates Canadian television station ITV. The company also
owns the Canadian-registered trademark ITV and a website with the domain
name 'itv.ca'. <a href="http://www.itv.net/";>ITV Technologies</a>
operates an internet business, which provides on-demand video streaming
and uses the domain name 'itv.net'. WIC challenged ITV Technologies' use
of the ITV Technologies name and the 'itv.net' domain name.<br><br>
The court allowed the Internet to be used at the trial for:
<ul>
<li>performing demonstrations;<br>
<li>cross-examining witnesses; and<br>
<li>retrieving electronic versions of paper documents.
</ul><br>
In justifying such use, the court held that (i) when considering the
content of a website, the original provides better evidence than a
printed copy, and (ii) the official websites of well-known organizations
can provide reliable evidential information.<br><br>
The court dismissed WIC's claims against the 'itv.net' domain name under
the <a href="http://laws.justice.gc.ca/en/T-13/index.html";>Trademarks
Act</a>, which requires a multi-factor confusion analysis. The court
found there to be no likelihood of confusion on a variety of grounds,
including that (i) the parties' activities, while related, were not
similar, and (ii) they used different media and were in different
geographical locations. In addition, WIC's registration of the ITV
trademark did not entitle it to monopolize domain names with the 'itv'
prefix.<br><br>
The court's decision implies that special considerations and different
legal rules are not necessary for resolving trademark disputes involving
domain names. This is consistent with the opinion of the Ontario Court of
Appeal, which stated that conventional trademark principles apply to the
use of trademarks on the Internet.<br><br>
<i>Bradley J Freedman, Borden Ladner Gervais LLP, Vancouver<br>
</i>i</body>
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