The Court of Appeal for Ontario has ruled that a domain name is personal property and a business asset located in Ontario. Prior to this decision, there was little guidance in Canadian law on the issue of whether a domain name constitutes property.
The decision rendered on Aug 5 2011, involved a dispute between Tucows.com Co. and Renner S.A., about Tucow's right to keep the domain name "renner.com" in the face of Renner's registered trade-mark "Renner". Tucows, a technology corporation located in Toronto Ontario, had purchased the domain name renner.com from a third party in 2006. The domain name is registered with the internationally recognized Internet Corporation for Assigned Names and Numbers (ICANN). Renner, a subsidiary of a leading US retailer JCPenney, owns the trade-mark "Renner" in Brazil and other countries.
The issue of the appeal was whether a trade-mark dispute between Tucows and Renner should be heard in Ontario. The Court held that a domain name can be considered to be property in Ontario for the purposes of rule 17.02(a) of the Ontario Rules of Civil Procedure. Justice Weiler stated that:
"In order to ground jurisdiction pursuant to rule 17.02(a) a domain name must not only be property, it must also be property in Ontario. Renner argued that the intangible nature of a domain name makes it impossible for it to be located "in Ontario". Simply because a domain name is intangible property does not mean that it cannot have a location that allows a court to ground jurisdiction."
Justice Weiler relied upon the Supreme Court of Canada decision in Williams v. Canada [1992] 1 S.C.R. 877, at pp. 891-93, which established the principle that the situs of intangible property is determined by where it has the strongest contacts. In terms of the Internet, the Supreme Court of Canada in Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, [2004] 2 S.C.R. 427 held that the relevant connecting factors to asssess the location of an Internet communication would include the situs of the content provider, the host server, the intermediaries and the end user. In this case Justice Weiler applied the Supreme Court's analogy of the connecting factors favouring location of the domain name in Ontario based on the location of the registrant of the domain name, as well as the location of the registrar and the servers as intermediaries.
However, Justice Weiler did point out that based on Easthaven Ltd. v. Nutrisystem.com Inc. (2001), 55 O.R. (3d) 334 (S.C.), the mere fact that a domain name is registered by a foreign corporation with an Ontario registrar, would not be sufficient to give it a physical presence in Ontario.
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