An example of the latter method was seen in the case Tele-Direct v. Canadian Business Online Inc., where the respondent registered the domain name www.cdnyellowpages.com and the plaintiff’s actual URL is www.yellowpages.ca.

The actor Arnold Schwarzenegger has tried to prevent misuse of his famous moniker by registering not only Schwarzenegger.com, but also such misspellings as Schwartzenegger.com and Schwarzeneger.com. He also controls those domains with the .net and .org endings appended. The infringement that’s alleged in the case at the centre of this paper - Toronto.com v. Toronto2.com - is of this similar-domain-name variety. From the outset, though, it’s apparent that a mere typo or misspelling isn’t at issue. It would take extraordinarily bad typing or spelling skills to add a 2 to the end of Toronto unintentionally.

The Case
The plaintiff, toronto.com, is a partnership between Metroland Printing, a subsidiary of Torstar corporation, Bell ActiMedia (formerly Tele-Direct) and CitySearch.com. Unsatisfied with the results of a cease-and-desist letter sent the previous month, it launched a lawsuit in Federal Court on June 24, 1999, against Friendship Enterprises, the operator of a Web site known as Toronto2. The plaintiff claims, among other things, that the defendant has infringed the copyright it holds in its Web pages by linking and framing, and passed off wares and services as those of the plaintiff by adopting a confusingly similar mark. As a remedy, toronto.com sought an interlocutory and permanent injunction from the court, $500,000 in damages and delivery up or destruction of all materials in the defendant’s control exhibiting the words Toronto2.com or confusingly similar words, names or marks.

On Jan. 31, 2000, Justice Heneghan of the Federal Court denied the request for an interlocutory injunction with reasons to follow.

Background
The domain name toronto.com was first registered with Network Solutions on Nov. 5, 1997, by what was then known as Toronto Star CitySearch. It was registered in the name of the plaintiff on Jan. 8, 1998. An Internet city guide could be found at www.toronto.com as early as Dec. 31, 1997. Advertising of the site as toronto.com and its tagline - All You Need to Know About T.O. - began in March 1998. The plaintiff registered the business name toronto.com with the Ontario Ministry of Consumer and Commercial Relations on Aug. 31, 1998.

The plaintiffs describe their business as consisting of wares, an Internet city guide and directory for Toronto, and services that include Web site design, online advertising, new media consulting, online publishing and the dissemination of the city guide and directory.

On Feb. 28, 1999, Friendship Enterprises - a business run by Ritchie Sinclair and Garth Cole - registered toronto2.com with Network Solutions. The Web site went online in April but was not officially launched until June 29, 1999. The site is referred to as Toronto2 and uses the tagline Toronto’s Internet Community Centre. In an amended defence statement of Sept. 15, 1999, the defendant describes its Web site as an electronic gathering place and marketplace for the widest possible sale and online distribution of consumer goods and services directly to members of the Toronto2 community. The site is further characterized as a cooperative and voluntary effort that will reinvest any revenues into lowering the price for goods and services.

Viewing the Web sites in succession in February 2000 would not give even the casual browser the impression that they are one and the same site. Which is not to say they weren’t more similar at the time the plaintiffs launched the suit, but it’s hard to imagine based on the current state of affairs. And, no doubt to mitigate against greater damages if Friendship Enterprises is found to be in the wrong, Toronto2 displays this disclaimer fairly prominently on its home page: The Toronto2 Web site is not affiliated with the toronto.com Web site. If you are looking for toronto.com you may go to it by clicking on this link.

Analysis
Part 1: Application for Interlocutory Injunction
As noted, the bid for an interlocutory injunction failed. However, in the absence of reasons from the judge, it is possible to speculate on how that decision was reached.
In a Federal Court decision released Jan. 9, 2000, regarding a domain name dispute in the case Molson Breweries vs. Marcus Kuettner, Jason Murray and Saycan Industries, Prothonotary Roza Aronovitch laid out the established three-part test for interlocutory injunctions:

• a) has the applicant demonstrated a prima facie case, or at least a serious question to be tried?
• b) has the applicant demonstrated that unless the injunction is granted, it will suffer irreparable harm that is not susceptible to, or is difficult to compensate in damages? and
• c) with which party does the balance of convenience lie.

The two main issues to be tried in the toronto.com vs. toronto2.com case are copyright infringement and passing off. The day after receiving the cease-and-desist letter, defendant Ritchie Sinclair addressed the first issue. He removed the six disputed frames on May 22, 1999, a month before toronto.com had even filed its statement of claim with the Federal Court. If the offending links and frames were gone prior to the action proceeding, that seems to diminish the possibility of there being a serious question to be tried.

There remains the more complex issue of passing off related to the domain name and trade-mark. The plaintiff applied to the Canadian Intellectual Property Office in October 1998 to register both TORONTO.COM and TORONTO.COM: ALL YOU NEED TO KNOW ABOUT T.O. as trade-marks. The initial response received from the office was that the marks were likely not registrable due, at least in part, to their descriptive nature. According to Sec. 12. (1) of the Trade-Marks Act, a trade-mark is not registrable if it is clearly descriptive or deceptively misdescriptive … of the wares or services in association with which it is used. The word Toronto is descriptive of the city for which the toronto.com site provides information and .com is descriptive of a commercial enterprise.

Failure to have a registered trade-mark definitely weakens the toronto.com case because there is less protection at common law than under statute.

For instance:

• A) For a passing-off complaint to succeed there must be proof that a defendant tried to misrepresent its wares or services as the plaintiff’s. A registration protects the mark without proof of damage.
• B) Even when a defendant prominently disclaims a connection between the two businesses, the registrant can have the use of a confusingly similar mark stopped.

In its recent Imax Corp. v. Showmax, Inc. decision, the Federal Court cited the existence of a registered Imax trade-mark as part of the reasons for deciding there was a serious issue to be decided. As well, the court pointed to a public opinion survey carried out in the marketplace to establish confusion between the two names.

In the toronto.com case, the plaintiff did not introduce any such evidence.

All things considered, it’s quite possible the plaintiff did not prove to the court the existence of a serious question to be tried. If the court was convinced, the plaintiff could easily have failed to pass the remaining two hurdles.

As far as irreparable harm in the absence of an injunction, an affidavit supplied by the plaintiff itself throws that into question. George Jewell, general manager of toronto.com, told the court that his employer spent well in excess of $1 million on advertising and promotion for the site. Toronto2, meanwhile, spent nothing on advertising and was known only through its Internet site and any media publicity (which the lawsuit would, ironically, create). The plaintiff, who discovered Toronto2 during a routine Internet search in May 1999, insists that the defendant didn’t advertise because it was free riding on toronto.com. However, evidence was entered that the plaintiff averaged about 96,000 page hits a day while the defendant’s site was averaging only five hits a day at the time the suit was filed. Free, maybe, but not much of a ride.

The question becomes what realistic harm could a site so obviously outmatched do to a creation of the phone company and a well-established media conglomerate? In the interim until the case is ultimately decided, not much.

In the unlikely case that the interlocutory injunction request passed those first two hurdles, the plaintiff would still have to prove the balance of convenience should favour its cause. The defendant makes a convincing argument that if it is denied the use of Toronto2 and Toronto2.com, then it simply ceases to exist. The domain name is its address; an address that Ritchie Sinclair says was devised to indicate a parallel or second community in cyberspace. It’s part of a proposed Canada2 network that contains such other domains as halifax2.com and vancouver2.com. In other words, the domain name is purposely descriptive and to deny its use would thwart the enterprise.

A second argument advanced is that an interlocutory injunction would, in reality, prejudge one of the central things the court is expected to rule upon - the validity of the use of the Toronto2 name.

In contrast, toronto.com simply has to put up with the existence of a similarly named site that shows few signs of ad sponsorship or activity.
All in all, the case for an interlocutory injunction was wanting.

Part II: The Case Still To Be Tried
Toronto2 survived the threat of an interlocutory injunction, but the lawsuit still hangs over the heads of Friendship Enterprises’ two principals. Here then is a brief look at some issues that could crop up when the issue does go before a judge.

The links and frames that caused consternation for the plaintiff were so-called deep links that bypass the main pages of a site and any attendant notices and, most importantly, advertising. This was also the cause for complaint in Shetland Times Co. Ltd. v. Wills and in Ticketmaster Corp. v. Microsoft Corp. The plaintiff in the Shetland Times case won by convincing the court that the defendant infringed copyright by repeating its headlines for use as links from the external site. This tack would be of no use to toronto.com. The Ticketmaster case did not proceed to trial, but Microsoft did relent - as did Friendship Enterprises.

It’s worth noting that developing Internet practice, or netiquette, provides that when external links are called up from a Web site, it’s good form to spawn a separate browser window for the new content and keep the original window open. This can be seen in action at news sites such as www.cbc.ca and www.cnn.com, which provide links to material related to news stories. The practice avoids confusion. It’s easier to make a case against framing than straight linking because in the latter the savvy user should notice the changed URL. In framing, the URL remains that of the initial site and advertising and trade-marks that it would not normally be associated with can flank the framed site. This can lead to abuses such as in Imax Corp. v. Showmax, Inc., where the plaintiff’s logo was clearly apparent in material framed by the defendant. This amounted to a compilation pursuant to Section 2 of the Copyright Act, Imax argued, and was an infringement under sections 3 and 27 of the Act. This was all a side issue in the case, but it should be noted that Imax received the interlocutory injunction. The compilation angle on framing is not one I’ve seen reported elsewhere and seems worthy of pursuit. In the toronto.com case, however, the frames were removed once the defendant was notified so the litigation seems rather heavyhanded. It’s apparent that framing is an acknowledged problem on the Net because technological blocks to its use have been developed. Frame busting utilities are built into Web site creation software such as Allaire Homesite.

The plaintiff’s other main allegation, that Toronto2 tried to pass itself off as toronto.com, will be hard to prove because of the use of a city name as the domain name. The defendants argue that, if anything, the name could be said to rightfully belong to the municipal government, which has its Web site under the .ca top-level domain at www.city.toronto.on.ca. Arguably, anyone doing a search for Toronto might expect to end up there. However, if a Net surfer simply types toronto into a current browser’s address bar, it will try the .com ending by default. This convention came about because of the popularity of the .com suffix and it certainly works to toronto.com’s advantage. Similarly, the porn site whitehouse.com takes advantage of people’s unfamiliarity with alternative top level domains such as the .gov that ends the legitimate White House site.

Toronto.com could strengthen its case for a trade-mark, and thus its passing off case, if it could convince the Canadian Intellectual Property Office that its mark has become distinctive through use. That is, the intensive advertising undertaken to promote the site has given toronto.com a secondary meaning in the marketplace and forever linked it with the plaintiff’s goods and services. This seems unlikely given the fact that Molson failed in its quest to trade-mark its heavily advertised Canadian beer brand.

Another point the defendant’s raise is the multiplicity of other sites with toronto in the domain name, including www.4toronto.com. This one is registered to a U.S. concern and there have been no reports of action taken against it by toronto.com, perhaps because jurisdictional issues make the case harder to pursue. The plaintiff has gone after other domain owners but settlements have been reached before trial and no domains have been shut down. So, for instance, www.ctoronto.com remains online but a gag order was part of the deal to end the dispute.

Conclusion
In the end, toronto.com vs. toronto2.com raises some interesting issues but the plaintiff’s case seems destined to fail. The plaintiff does not hold a registered trade-mark, would be hard-pressed to claim rights over the name Toronto or its many possible variations and any infringing behaviour that was occurring ceased before the defendant’s site officially launched.

It seems to be another case of a Goliath out to slay David, as in the recent eToys vs. etoy debacle. Admittedly, that case was even more clearcut because etoy, a Zurich-based conceptual art group, had possession of its domain name before eToys, the Internet retailer, ever came along and tried to take that name away. The biggest victory for the artists was in the court of public opinion, where the corporation was widely looked upon as a bully. The dispute and its outcome in favor of etoy prompted John Perry Barlow, a Grateful Dead lyricist and oft-quoted Web pundit, to say:

This is the point where people begin to realize there is a difference between the Internet industry and the Internet community, and the Internet community needs to bind itself together and find a common voice."

Bibliography

Articles and Books

BBC News. March 3, 2000.
BBC Thwarts Cybersquatter [Online]
Available: http://news.bbc.co.uk/hi/english/uk/newsid_665000/665530.stm [March 7, 2000]

Cabell, Diane. Dec. 15, 1999.
Name Disputes Learning Cyberlaw in Cyberspace [Online]
Available: http://www.mama-tech.com/names.html [Feb. 22, 2000]

DiMatteo, Enzo. Feb. 3, 2000.
Torstar Plays www.hardball Now Magazine [Online]
Available: http://www.nowtoronto.com/issues/19/23/News/feature2.html [Feb. 14, 2000]

Evans, Mark. Jan. 14, 2000.
Domain Name Battle May Set Legal Precedent The Globe and Mail [Online] Available:

McLaughlin, Gord. Aug. 24, 1999.
Artist, Inventor Battle Corporate Giants Over Web Site The National Post [Online]
Available: http://www.toronto2.com/pressroom/post.htm [Feb. 14, 2000]

Schneider, Mark. Feb. 2, 2000.
A Tale of Two Torontos Digital Desk [Online]
Available: http://www.digitaldesk.com/2000/02/02_01_toronto2dotcom.htm#
[Feb. 14, 2000]

Standard, The. Jan. 26, 2000.
Victory in the Toy Wars
[Online] Available: http://www.thestandard.com/article/display/0,1151,9130,00.html
[Feb. 14, 2000]

Takach, George S., Computer Law, 1st ed.
(Toronto: Irwin Law, 1998)

Vaver, David, Intellectual Property Law, 1st ed.
(Concord, Ont.: Irwin Law, 1997)

Cases

Imax Corp v. Showmax, Inc.
(18 Jan 2000) Docket No. T-592-99
(Internet: http://www.fja.gc.ca/en/cf/2000/orig/html/2000fca25888.o.en.html) (FCC)

Molson Breweries v. Kuettner
(9 Dec. 1999) Docket No. T-106-99
(Internet: http://www.fja.gc.ca/en/cf/1999/orig/html/1999fca25773.o.en.html) (FCC)

Tele-Direct v. Canadian Business Online Inc.
(15 Sept. 1998) Docket No. T-1340-97
(Internet: http://www.fja.gc.ca/en/cf/1998/orig/html/1998fca23147.o.en.html) (FCC)

Case-related documents the defendant posted online

Statement of Claim, June 23, 1999
(Internet: http://www.toronto2.com/pressroom/claim.shtml)

Amended Statement of Defence, Sept. 14, 1999
(Internet: http://www.toronto2.com/pressroom/defence.shtml)

Affidavit of George Jewel, Toronto.com general manager, July 30, 1999
(Internet: http://www.toronto2.com/pressroom/jewell.shtml)

Affidavit of Richie Sinclair, Toronto2 web site designer, Sept. 21, 1999
(Internet: http://www.toronto2.com/pressroom/affidavita.htm)

Defendant’s Memorandum of Facts and Law, Oct. 26, 1999
(Internet: http://www.toronto2.com/pressroom/factandlaw.shtml)