Court of Appeal confirms domain name as “instrument of confusion”

The Federal Court of Appeal has confirmed – again –  that adoption and use of a domain name can in fact constitute the mechanism by which a trademark is infringed in Canada: Michaels v. Michaels Stores Procurement Company, Inc., 2016 FCA 88.  In fairly brief reasons given from the bench upholding a default judgment, the Court confirmed the appellant, who had been the defendant in the court below, was liable for passing off and trademark infringement.

In confirming that conclusion and upholding the order requiring that the domain name be transferred to the plaintiff, the Court noted that “[o]n the evidence before the judge, the domain name was the mechanism by which the respondent’s mark was infringed, and was the instrument of confusion in the marketplace.” (at para. 9).

While the decision does not extend unreasonably into concluding that any use of a trademark as a domain name would constitute infringement or passing off, it recognizes that confusion may result from the use of a domain name, and that if it does, such use is actionable.   

The finding that confusion can result from use of a trademark in a domain name should be unsurprising; however, recent jurisprudence of lower courts in Canada appear to have suggested that use of a confusing domain name cannot constitute infringement.  Hopefully this decision will put such suggestions to bed.