Tucows.Com Co. v. Lojas Renner S.A., 2011 ONCA 548

• Judge: Weiler, Simmons and Epstein, JJ.A.
• Court: Court of Appeal (Ontario)
• Case Date: April 08, 2011
• Jurisdiction: Ontario
• Citations: 2011 ONCA 548;(2011), 281 O.A.C. 379 (CA)

Tucows.Com Co. v. Lojas Renner SA (2011), 281 O.A.C. 379 (CA)

MLB headnote and full text

Temp. Cite: [2011] O.A.C. TBEd. AU.013

Tucows.Com Co. (plaintiff/appellant) v. Lojas Renner S.A. (defendant/respondent)

(C52972; 2011 ONCA 548)

Indexed As: Tucows.Com Co. v. Lojas Renner S.A.

Ontario Court of Appeal

Weiler, Simmons and Epstein, JJ.A.

August 5, 2011.

Summary:

The plaintiff (Tucows) was a technology corporation incorporated in Nova Scotia whose principal office was located in Toronto, Ontario. Lojas Renner S.A. (Renner) was a Brazilian company which operated a series of retail department stores in Brazil and was the registered owner in Brazil and other countries of the trademark "Renner". A dispute arose over Tucow's right to keep the domain name <renner.com>, which it purchased in 2006 from the Internet Corporation for Assigned Names and Numbers (ICANN), in the face of Renner's registered trademark "Renner". Dispute resolution proceedings were commenced under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP). Rather than participate in the arbitration proceedings, Tucows commenced a court action in Ontario for declaratory relief against Renner. Renner brought a motion under the Rules of Civil Procedure (Ont.) to set aside service of Tucows's statement of claim and to permanently stay Tucows's action for want of jurisdiction or to dismiss it. Tucows responded that it was entitled to serve the statement of claim outside Ontario without leave, relying primarily on rule 17.02(a).

The Ontario Superior Court, in a decision with neutral citation [2010] O.T.C. Uned. 5851, set aside the service of the statement of claim and stayed Tucows's action on the grounds that there was no real and substantial connection between Renner and Ontario and as such rule 17.02 was not engaged. In particular, the motions judge held that a domain name was not "personal property" within the meaning of rule 17.02(a), and that, being intangible, it was not "located in Ontario". Thus, the motions judge held that there was no presumption of a "real and substantial connection", and that Tucows had failed to establish that such a connection existed in the circumstances of the case. The dispute should remain under the UDRP. Tucows appealed.

The Ontario Court of Appeal allowed the appeal. The court concluded that the UDRP Rules contemplated the possibility of litigation before domestic courts and that the assumption of jurisdiction by the Ontario courts would therefore not undermine the administrative process. Jurisdiction need not be declined on that basis. The court concluded further that the claim for a declaration that Tucows owned the domain name <renner.com> was a "proceeding" in respect of "personal property in Ontario" within the meaning of rule 17.02(a). Accordingly, there was a presumption that the dispute had a real and substantial connection with Ontario. That presumption had not been rebutted. Therefore, Tucows was entitled to seek a declaration as to whether or not it owned the domain name <renner.com>.

Conflict of Laws - Topic 1007

Service out of jurisdiction - General principles - Declaratory action - Civil Procedure Rule 17.02(a) provided that "a party to a proceeding may, without a court order, be served outside Ontario with an originating process or notice of a reference where the proceeding against the party consists of a claim or claims (a) in respect of ... personal property in Ontario ..." - The Ontario Court of Appeal held that rule 17.02(1) was applicable, even where the claim was for a declaration of rights only - The court rejected the argument that there had to be an action based on an allegation of breach of contract, a tort or the like before rule 17.02 applied - The court noted that its conclusion that a statement of claim for a declaration of rights complied with the formal requirements of rule 17.02(a) was reinforced by the Uniform Law Conference of Canada Model Court Jurisdiction and Proceedings Transfer Act - See paragraphs 32 to 40.

Conflict of Laws - Topic 1063

Service out of jurisdiction - Personal property in jurisdiction - Domain names - [See Conflict of Laws - Topic 4884 ].

Conflict of Laws - Topic 4884

Property - Personalty - Domain names - The plaintiff (Tucows) was a Nova Scotia technology corporation whose principal office was in Toronto, Ontario - Lojas Renner S.A. (Renner) was a Brazilian retail department store company, which operated stores in Brazil and elsewhere using the trademark "Renner" - Tucows commenced an action in Ontario for declaratory relief against Renner respecting the domain name <renner.com> - An issue arose as to whether the dispute should be heard in Ontario and more specifically, whether service of Tucow's statement of claim on Renner outside the jurisdiction of Ontario was valid or should be validated - The Ontario Court of Appeal held that the claim for a declaration that Tucows owned the domain name <renner.com> was a "proceeding" in respect of "personal property in Ontario" within the meaning of rule 17.02(a) (the service ex juris without leave rule) - Accordingly, there was a presumption that the dispute had a real and substantial connection with Ontario - That presumption had not been rebutted - Therefore, Tucows was entitled to seek a declaration as to whether or not it owned the domain name <renner.com> - See paragraphs 25 and 74.

Conflict of Laws - Topic 4932

Property - Situs of personalty - Domain names - [See Conflict of Laws - Topic 4884 ].

Conflict of Laws - Topic 7286

Contracts - Jurisdiction - Choice of forum by parties (incl. internet contracts, domain names, etc.) - A dispute arose over Tucow's right to keep the domain name <renner.com>, which it purchased from the Internet Corporation for Assigned Names and Numbers (ICANN), in the face of Renner's registered trademark "Renner" - Dispute resolution proceedings were commenced under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) - The UDRP proceedings were terminated when Tucows commenced court action in Ontario - At issue was whether the domain name dispute should have remained in the ICANN dispute resolution process - The Ontario Court of Appeal concluded that the UDRP and the UDRP Rules contemplated the possibility of litigation before domestic courts and that the assumption of jurisdiction by the Ontario courts would therefore not undermine the administrative process - Jurisdiction need not be declined on that basis - See paragraphs 24 and 26 to 31.

Personal Property - Topic 2

General - Property - What constitutes - The Ontario Court of Appeal discussed what constituted property at common law - See paragraphs 56 to 66.

Personal Property - Topic 7

General - Domain names - Civil Procedure Rule 17.02(a) provided that "a party to a proceeding may, without a court order, be served outside Ontario with an originating process or notice of a reference where the proceeding against the party consists of a claim or claims (a) in respect of ... personal property in Ontario ..." - The Ontario Court of Appeal held that a domain name was "personal property" within the meaning of Civil Procedure Rule 17.02(a) - The court held also that domain name, albeit intangible property, could be considered to be property located in Ontario for the purposes of rule 17.02(a) - In reaching these conclusions, the court discussed, inter alia, the nature of a domain name, the jurisprudence, and what constituted "property" at common law - See paragraphs 41 to 72.

Practice - Topic 2555

Service - Service of notice, writ or statement of claim out of jurisdiction - Service without leave - [See Conflict of Laws - Topic 1007 and Conflict of Laws - Topic 4884 ].

Words and Phrases

Personal property - The Ontario Court of Appeal held that a domain name was "personal property" within the meaning of Civil Procedure Rule 17.02(a) - See paragraphs 41 to 66.

Cases Noticed:

Van Breda et al. v. Village Resorts Ltd. et al. (2010), 264 O.A.C. 1; 98 O.R.(3d) 721 (C.A.), refd to. [para. 17].

TeleZone Inc. v. Canada (Attorney General) (2008), 245 O.A.C. 91; 94 O.R.(3d) 19; 2008 ONCA 892, refd to. [para. 26].

Dluhos v. Strasberg (2003), 321 F.3d 365 (3rd Cir.), refd to. [para. 30].

Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona (2003), 330 F.3d 617 (4th Cir.), refd to. [para. 30].

Masson v. Kelly and North York (City) (1991), 52 O.A.C. 201; 5 O.R.(3d) 786 (C.A.), refd to. [para. 34].

Ecolab Ltd. v. Greenspace Services Ltd. et al. (1998), 107 O.A.C. 199; 38 O.R.(3d) 145 (Div. Ct.), refd to. [para. 36].

Singh v. Howden Petroleum Ltd. (1979), 24 O.R.(2d) 769 (C.A.), refd to. [para. 36].

Schreiber v. Mulroney, [2007] O.T.C. Uned. G72; 88 O.R.(3d) 605 (Sup. Ct.), refd to. [para. 36].

Cannon v. Funds for Canada Foundation et al., [2010] O.T.C. Uned. 4517; 2010 ONSC 4517, affd. [2011] O.A.C. Uned. 151; 2011 ONCA 185, refd to. [para. 36].

Patel v. Allos Therapeutics Inc., 2008 WL 2442985 (Ch. D.), refd to. [para. 37].

Canada (Attorney General) v. Giacomelli (2010), 317 D.L.R.(4th) 528 (Ont. Div. Ct.), refd to. [para. 38].

Research in Motion Ltd. v. Atari Inc. et al., [2007] O.T.C. Uned. H67; 61 C.P.R.(4th) 193 (Sup. Ct.), leave to appeal refused [2007] O.A.C. Uned. 450; 2007 CanLII 46717 (Div. Ct.), refd to. [para. 39].

CCH Canadian Ltd. et al. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339; 317 N.R. 107, refd to. [para. 39].

Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd., A.I.R. 2004 S.C. 3540, [2005] 2 L.C.R. 97 (India S.C.), refd to. [para. 44].

Nobosoft Corp. v. No Borders Inc. et al., [2006] O.T.C. Uned. 978; 2006 CarswellOnt 6213, additional reasons [2006] O.T.C. Uned. D96; 2006 CarswellOnt 8449 (Sup. Ct.), revd. (2007), 225 O.A.C. 36; 2007 ONCA 444, refd to. [para. 47].

SRU Biosystems Inc. v. Hobbs et al., [2006] O.T.C. 284; 2006 CarwellOnt 1500 (Sup. Ct.), refd to. [para. 47].

Easthaven Ltd. v. Nutrisystem.com Inc. et al., [2001] O.T.C. 615; 55 O.R.(3d) 334 (Sup. Ct.), refd to. [para. 48].

Kremen v. Cohen - see Kremen v. Online Classifieds Inc.

Kremen v. Online Classifieds Inc. (2003), 337 F.3d 1024 (9th Cir.), refd to. [para. 50].

Office Depot Inc. v. Zuccarini (2010), 596 F.3d 696 (9th Cir.), refd to. [para. 50].

CRS Recovery Inc. v. Laxton (2010), 600 F.3d 1138 (9th Cir.), refd to. [para. 50].

OBG Ltd. et al. v. Allan et al., [2008] 1 A.C. 1; 369 N.R. 66 (H.L.), refd to. [para. 52].

Hoath v. Connect Internet Services Pty. Ltd. (2006), 229 A.L.R. 566 (N.S.W.S.C.), refd to. [para. 52].

Network Solutions Inc. v. Umbro Int'l Inc. (2000), 529 S.E.2d 80 (Va.), refd to. [para. 53, footnote 7].

Jubber v. Search Mkt. Direct Inc. (In re Paige) (2009), 413 B.R. 882 (D. Utah Bktcy.), affd. (2011), 443 B.R. 878 (D. Utah), refd to. [para. 53, footnote 8].

Manrell v. Minister of National Revenue, [2003] 3 F.C. 727; 302 N.R. 91 (F.C.A.), refd to. [para. 58].

Saulnier (Bankrupt), Re [2008] 3 S.C.R. 166; 381 N.R. 1; 271 N.S.R.(2d) 1; 867 A.P.R. 1; 2008 SCC 58, refd to. [para. 60].

National Trust Co. v. Bouckhuyt (1987), 23 O.A.C. 40; 61 O.R.(2d) 640 (C.A.), refd to. [para. 61].

National Provincial Bank Ltd. v. Ainsworth, [1965] A.C. 1175 (H.L.), refd to. [para. 64].

Metlakatla Ferry Service Ltd. v. British Columbia (1987), 37 D.L.R.(4th) 322 (B.C.C.A.), refd to. [para. 68].

Manitoba Fisheries v. Canada, [1979] 1 S.C.R. 101; 23 N.R. 159, refd to. [para. 68].

Williams v. Minister of National Revenue, [1992] 1 S.C.R. 877; 136 N.R. 161, refd to. [para. 69].

Canada v. Folster - see Minister of National Revenue v. Poker et al.

Minister of National Revenue v. Poker et al., [1997] 3 F.C. 269; 212 N.R. 342 (F.C.A.), refd to. [para. 69].

Society of Composers, Authors and Music Publishers of Canada v. Canadian Association of Internet Providers et al., [2004] 2 S.C.R. 427; 322 N.R. 306, refd to. [para. 70].

Statutes Noticed:

Civil Procedure Rules (Ont.) - see Rules of Civil Procedure (Ont.).

Rules of Civil Procedure (Ont.), rule 17.02(a), rule 17.03 [para. 18]; rule 17.06(1), rule 17.06(3) [para. 19].

Authors and Works Noticed:

Bogdan, Michael and Maunsbach, Ulf, Domain Names as Jurisdiction-Creating Property in Sweden (2009), 3 Masaryk U. J.L. & Tech. 175, generally [para. 54]; p. 180 [para. 63, footnote 9].

Burshtein, Sheldon, Is a Domain Name Property? (2005), 4 C.J.L.T. 195, pp. 195, 197 [para. 53, footnote 7].

Hancock, Daniel, You Can Have It, But Can You Hold It? Treating Domain Names as Tangible Property (2011), 99 Ky. L.J. 185, pp. 156 [para. 50, footnote 4]; 161 [para. 51, footnote 5]; 191 [para. 53]; 193, 194 [para. 45]; 205 [paras. 51, 53].

Harris, J.W., Property and Justice (1996), p. 139 [para. 59].

Howell, Robert, Canadian Telecommunications Law (5th Ed. 2011), pp. 153, 157 [para. 5]; 162 [para. 46].

Lipton, Jacqueline D., Bad Faith in Cyberspace: Grounding Domain Name Theory in Trademark, Property and Restitution (2010), 23 Harv. J.L. & Tech. 447, pp. 473, 474 [para. 53].

Vaver, David, Intellectual Property Law: Copyright, Patents, Trademarks (2nd Ed. 2011), pp. 513 [para. 46]; 611 [para. 39].

Ziff, Bruce H., Principles of Property Law (5th Ed. 2010), p. 2 [para. 57].

Counsel:

P. John Brunner and Mario E. Delgado, for the appellant;

Patrick Cotter, for the respondent.

This appeal was heard on April 8, 2011, before Weiler, Simmons and Epstein, JJ.A., of the Ontario Court of Appeal. Weiler, J.A., delivered the following judgment for the Court of Appeal on August 5, 2011.