South Simcoe Railway Heritage Corporation v Wakeford, 2011 ONSC 1234, 18 April 2011
Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr095, first published online: June 30, 2011
On a motion to strike out, the Ontario Superior Court of Justice recently considered whether a plaintiff's claims for breach of trust, detinue sur trover, wrongful conversion, or misappropriation of IP rights in recovering their domain name disclosed a reasonable cause of action.
The Supreme Court of Canada in Hunt v Carey Canada Inc. 74 DLR (4th) 321 indicated that a pleading should only be struck out if it was ‘plain and obvious’ that the statement of claim disclosed no cause of action. In this case, the plaintiff pleaded breach of trust, detinue sur trover, wrongful conversion, or misappropriation of IP rights in seeking to recover a domain name (steamtrain.com). The question before the motions judge was whether any of those pleadings were time barred as the Limitations Act 2002, S.O. 2002, C.24 sets a general two-year window from the date on which a claim is discovered to bring an action.
The plaintiff is a non-profit corporation that operates a historic steam strain. At various times, the defendant had either been a volunteer or an officer of the plaintiff. In 1996, the defendant registered the domain name steamtrain.com for the plaintiff organization. In 2004, volunteers working on behalf of the plaintiff discovered that the defendant had altered details of the domain name registration. The registration details were again altered in 2005 as to become entirely private.
As this is a motion to strike certain pleadings in the statement of claim, the procedural history is almost non-existent, except that the motions judge indicated that the defendant allowed the plaintiff to use the domain name but reserved the right to revoke that permission at any time.
The motions judge held that, since the plaintiffs became aware of the tortious claims in 2004, the limitation period expired in 2006. Accordingly, commencing the action on 19 March 2010 meant that the tort claims were barred by the Limitations Act. In relation to the claim for damages for breach of trust, the motions judge indicated that it was not plain and obvious that the limitation period had expired, or that the claim was otherwise untenable. These were matters of fixed fact and law that required a trial to resolve.
Statements of claim are drafted with a heavy and eager hand. Pleading detinue sur trover—which, until now, was unfamiliar even to this torts professor—for the recovery of a purely intangible domain name is imaginative, to say the least. Nonetheless, at para 24 of the judgment, the motions judge made some obiter remarks worthy of note:
Although this was not part of the moving party's motion, the final point argued by the parties was whether this court has jurisdiction to grant the declaration sought in the claim with respect to ownership of the domain name and the intellectual property rights, as well as a mandatory order directing the defendants to convey the domain name to the plaintiffs. While the plaintiff may be correct that this claim is not within the jurisdiction of the Uniform Domain Name Dispute Resolution Policy prescribed by the Internet Corporation for Assigned Names and Numbers, this court is not convinced that this aspect of the claim should be dismissed for want of jurisdiction pursuant to rule 21.01(3)(a). The actions of the defendants may have to be measured in relation to that statute, to which this court was not referred, that governs the ownership of domain names if such legislation exists. It may be that proprietary rights in a domain name, like copyright and trademark, is a creature of statute as opposed to tort and property law, but the appropriate material was not placed before this court to make a determination of the question at issue.First, domain name dispute policies do not—and cannot—entirely oust the jurisdiction of the courts, if only for the simple reason that there is no privity between plaintiff and the contractual obligations of the defendant registrant and domain name registrar. Secondly, there is no legislation that governs the ‘ownership’ of domain names in Canada. Finally, the motions judge made an enormous assumption that there are indeed proprietary rights in domain names. One need only look at the Supreme Court of Canada decision in R. v Stewart  1 SCR 963, discussing theft of confidential information under the Criminal Code (as it stood at the time):
… that property must be capable of being taken or converted in a manner that results in the deprivation of the victim. Tangible things present no difficulty in this regard, as it is easy to conceive how they can be both taken and converted. On the other hand, pure intangibles, as they have no physical existence, can obviously only be converted, not taken. The “taking” of an intangible could only occur where such intangible is embodied in a tangible object, for example a cheque, a share certificate or a list containing information. However, that would not result in the taking of the intangible per se, but rather of the physical object evidencing it.A ‘raw’ domain name of a commonplace and/or descriptive word, phrase, or item can no more assume proprietary interests than a telephone number or email address. If, however, that raw domain name, telephone number, or even email address is supplemented by parallel trade mark rights, its proprietary nature is undoubtedly strengthened.