Tucows Wins on Appeal and Domains Ruled Property

Let’s set the stage and here is the background. Always start with the facts. Tucows bought the business Mailbank and in that acquisition they obtained the domain name Renner.com. A company named Lojas Renner S.A. (which is a subsidiary of JC Penny) decided to file a UDRP which is the Uniform Domain-Name Dispute-Resolution Policy that is administered by ICANN. Tucows did not want to go through the process and filed a lawsuit in Ontario, Canada against the company. The company did not want the case to proceed in court so they attempted to have the case removed by arguing that either the Canadian court did not have jurisdiction or the domain name was not property and therefore Tucows could not own it. The company wanted the issue to proceed under ICANNs UDRP.

Initially the ruling was handed down stating that the court did not have jurisdiction and the name was not personal property. Tucows appealed the ruling and the appeals court ruled just the opposite.

The 3 member Appellate Court cited several points but perhaps the most relevant to domain name owners is the following:

“ …Tucows derives income from being the holder of the rights in the domain name renner.com. It has fourteen clients who subscribe to personal e-mail services using the domain name. If the domain name were to be transferred to Renner, it would undoubtedly assist in unlocking the value of Renner’s business. The registered owner of the domain name has the right to exclusively direct traffic to the domain name’s corresponding website and to exclude anyone else from using the same name. The ability to exclude others from the enjoyment of, interference with or appropriation of a specific legal right was held by Cory J. in Bouckhuyt, as a necessary incident of property.”

It is unlikely this decision will be appealed as the next step in the process would be direct appeal to Canada’s Supreme Court.