Property Rights in Domain Names

Domain name registrants have property rights in most types of domain names comprising incorporeal rights and equitable rights. Whether there are property rights in .ca domain names is still in question.

Domain names are not corporeal property. You can’t touch or hold domain names. However, anyone can use a domain name to find a website that sits at the domain name’s address that a registrant or its registrar sets.

The distinction between corporeal property and incorporeal rights, which includes intangible property, is important under Canadian law. Incorporeal rights and equitable rights are types of property that are not seizable under Fi Fa (a writ of seizure and sale), depending upon the Province within which the writ is to be executed.

Registrars act as an agent to maintain a domain name registration and to manage the domain name’s settings. You may transfer your domain name registration to another registrar, as long as your domain name is in good standing or it has not expired beyond its grace period. However, your ability to use and transfer domains is not unfettered. You must adhere to the registration rules of your domain name’s particular domain extension. In this respect, it is unlike most forms of personal property.

A domain name is a form of contractual license from a registrar to a registrant. In the USA, domain names are treated as incorporeal property, like a patent, trademark and a copyright registration.

Warren E. Agin wrote in Chapter 13 of his book, Bankruptcy And Secured Lending In Cyberspace, published by Bowne & Co., 2000:

Whether a license or a contract right, a domain name will be considered a general intangible under the UCC in the USA. The category of“general intangibles” is a catch-all, encompassing any personal property not included in the other asset categories provided by the UCC. The RMA Journal, September 2000.

Incorporeal Rights in .ca Domain Names?

Registrants may have either incorporeal rights in .ca domain names or equitable rights in domain names based on a registration contract. Registrants of  .ca domain names are restricted in the manner that they may use and transfer or dispose of their domain name, so their rights are not absolute as in other forms of property. For example, registrants of .ca domain names may not transfer the domains to entities who:

1. Do not meet Canadian presence requirements established by CIRA; and
2. Do not agree to the terms of the CIRA Registrant Agreement Version 2.0

Equitable Rights in Domain Names

Claimants have successfully brought applications in the Superior Court of Ontario to decide ownership based on equitable rights. This is typically done where an employee or agent entrusted to manage a domain name transfers it to themselves or to a third party without the express consent of the principal. These types of cases should be decided on property rights and civil rights principles of the jurisdiction where the principal or of the agent resides, depending on the circumstances of the matter.

One of the oldest acts in Ontario is the Property and Civil Rights Act. This Act pre-dates Canada’s confederation and it is only one paragraph.

Property and Civil Rights Act of Ontario:

Rule of decision

1. In all matters of controversy relative to property and civil rights, resort shall be had to the laws of England as they stood on the 15th day of October, 1792, as the rule for the decision of the same, and all matters relative to testimony and legal proof in the investigation of fact and the forms thereof in the courts of Ontario shall be regulated by the rules of evidence established in England, as they existed on that day, except so far as such laws and rules have been since repealed, altered, varied, modified or affected by any Act of the Imperial Parliament, still having the force of law in Ontario, or by any Act of the late Province of Upper Canada, or of the Province of Canada, or of the Province of Ontario, still having the force of law in Ontario. R.S.O. 1990, c. P.29, s. 1.

http://www.ontario.ca/laws/statute/90p29

Domain Names are a Form of Personal Property

Lojas Renner brought a WIPO UDRP proceeding regarding the renner.com domain name that Tucows.com Co. owned. Tucows short circuited the UDRP proceeding and brought an application for declaratory relief in the Superior Court of Ontario for a declaration that it had not registered or used domain name in bad faith and that the Brazilian defendant was not entitled to transfer of domain name.

Canadian jurisprudence treating domain names as intangible property

The Ontario Court of Appeal decided that Ontario courts have jurisdiction over the renner.com domain name because a .com domain name is a type of personal property within the meaning of rule 17.02(a) and Tucows’ principal office is located in Toronto, Ontario.

The court based its finding upon the following reasoning:

[47] Other types of intellectual property, such as patents, have been held to be property within the meaning of rule 17.02(a), although in most of the cases there is little or no analysis as to what constitutes property: see, e.g., Nobosoft Corp. v. No Borders Inc., [2006] O.J. No. 3808,2006 CarswellOnt 6213 (S.C.J.), additional reasons at [2006] O.J. No. 5249, 2006 CarswellOnt 8449 (S.C.J.), revd in part on other grounds[2007] O.J. No. 2378, 2007 ONCA 444 (CanLII); SRU Biosystems Inc. v. Hobbs, [2006] O.J. No. 987, 2006 CarswellOnt 1500 (S.C.J.).

[48] An Ontario Superior Court case that has explicitly considered whether a domain name is property is Easthaven, Ltd. v. Nutrisystem.com Inc. (2001), 2001 CanLII 27992 (ON SC), 55 O.R. (3d) 334, [2001] O.J. No. 3306 (S.C.J.). Nordheimer J. stated, at para. 24:

It does seem to me to be difficult to characterize a domain name as property. When I say property, I refer to either real or personal property. I appreciate that a domain name, like a copyright or a trademark, could be properly characterized as intangible property.

[49] He concluded, however, that because a domain name lacks a physical existence it was not property in Ontario and the mere fact the domain name was registered through a corporation that happened to carry on business in Ontario (the domain name registrar) did not give it a physical presence here. It should be noted that in Easthaven, the court was being asked to exercise jurisdiction over a Pennsylvania corporation at the behest of a Barbados corporation. The only connection with Ontario was Tucows, the registrar of the domain name in issue; however, the plaintiff had discontinued the action against Tucows as a co-defendant and Tucows was prepared to abide by [page578] any court order regardless of jurisdiction. Therefore, the circumstances before Nordheimer J. may be distinguished from those in the case under appeal. Suffice it to say, that, for now, there is little guidance in Canadian jurisprudence on the issue of whether a domain name constitutes property.

American jurisprudence treating domain names as intangible property

[50] The dominant view emerging from international jurisprudence and academic commentary appears to be that domain names are a new type of intangible property. American jurisprudence treating domain names as intangible property includes Kremen v. Cohen, 337 F.3d 1024 (9th Cir. 2003), where the United States Court of Appeals, Ninth Circuit held, at p. 1030 F.3d, that a domain name is [an] intangible property because it satisfies a three-part test for the existence of a property right:

a. it is an interest capable of precise definition;

b. it is capable of exclusive possession or control; and

c. it is capable of giving rise to a legitimate claim for exclusivity.

[See Note 3 below] See, also, Office Depot Inc. v. Zuccarini, 596 F.3d 696 (9th Cir. 2010), at pp. 701-702 F.3d; and CRS Recovery, Inc. v. Laxton, 600 F.3d 1138 (9th Cir. 2010), at p. 1144 F.3d.

[51] Renner argues that the treatment of domain names in the United States is not germane because it derives from the Anticybersquatting Consumer Protection Act, 15 U.S.C. s. 1125(d) (the “ACPA”), which allows the court to take jurisdiction against cybersquatters [See Note 4 below] who cannot be located and to pronounce an in rem judgment. [See Note 5 below] The fact that Congress enacted legislation which provides for granting an in rem judgment has been cited by courts as evidence that Congress intended domain names to be treated as a type of property (Hancock, at p. 205). In Kremen, however, the Ninth Circuit held that a domain name constituted intangible property not because the ACPA indicated that Congress intended domain names to be treated as property, but rather because a domain name met the three-part test for whether a property right exists. Thus, the case cannot be distinguished on this basis. [page579]

[52] Outside the United States, other common law jurisdictions have also treated domain names as intangible property. In OBG Ltd. v. Allan,[2008] A.C. 1, [2007] UKHL 21 (H.L.), Lord Hoffman, for the majority, observed, at para. 101, “I have no difficulty with the proposition that a domain name may be intangible property, like a copyright or trademark”. [See Note 6 below] In Satyam Infoway, the principal question raised on appeal before India’s Supreme Court was whether, in the absence of specific legislation, Internet domain names were subject to the legal norms applicable to other intellectual properties such as trademarks. It answered this question in the affirmative. In doing so, the court held, at paras. 11-12, that a domain name can be said to be a word or name which is capable of distinguishing the subject of trade or service made available to potential users of the Internet. Good will can be built up in connection with a domain name: para. 31. See, also, Hoath v. Connect Internet Services Pty. Ltd. (2006), 229 A.L.R. 566 (N.S.W.S.C.), at pp. 594-95 A.L.R., where the court presumed a domain name was intangible property.

[53] For the most part, academic commentators also agree that domain names should be considered a form of property. [See Note 7 below] As an example, in “Bad Faith in Cyberspace: Grounding Domain Name Theory in Trademark, Property, and Restitution” (2010), 23 Harv. J.L. & Tech. 447, Jacqueline D. Lipton comments, at p. 473, “The attraction of the property theory is that it fits the way people routinely think about domain names.” She suggests, [page580] at p. 474, that a property model may be the preferable basis on which to ground domain name theory:

[A property model] best accords with the way market participants relate to domain names. Even though a domain name is a form of contractual license from a registrar to a registrant, it results in a valuable asset that is freely traded on the open market and that is occasionally stolen by a bad faith actor. Even though a transfer of a domain name is, in reality, a de-registration from the original registrant and re-registration to the new registrant, it is now treated routinely as a seamless transfer, as if the name was being handed directly from the original registrant to the new registrant. Further, the acceptance of a property rights rationale for regulating generic domain names could take advantage of existing property-based laws such as theft and conversion, and simply extend them judicially to virtual property. See, also, Hancock, at pp. 191 and 205, in which the author acknowledges that in the United States domain names are generally treated as intangible property, but argues that domain names, although incorporeal, should be treated as tangible property with which they have more in common. [See Note 8 below]

[54] Two Swedish authors, Michael Bogdan and Ulf Maunsbach, in “Domain Names as Jurisdiction-Creating Property in Sweden” (2009), 1 Masaryk U. J.L. & Tech. 175, have specifically considered the issue of whether domain names should be considered property for the purposes of establishing jurisdiction over extra-territorial defendants. They argue not only that domain names satisfy the criteria for property under the applicable Swedish procedural rule, but also that domain names should be considered as property located in Sweden that can form the basis of jurisdiction so that these valuable assets will not be insulated from judgment.

[55] From this brief survey, it can be seen that the emerging consensus appears to be that domain names are a form of property. However, most of the jurisprudence to which I have referred does not consider the attributes of property in any depth. In order to properly determine whether a domain name constitutes personal property within the meaning of rule 17.02(a), it is necessary to consider the attributes of property for the purposes of the rule and whether a domain name has those attributes. [page581] 
(b) The attributes of property for purposes of rule 17.02(a)

[56] The term “personal property” is not defined in the Rules of Civil Procedure. The fact that this term is not defined leads me to the common law attributes of property.

[57] There is no agreed list of required attributes of “property” at common law. One academic author, Professor Ziff, in Principles of Property Law, 5th ed. (Toronto:
Carswell, 2010), describes property in this way, at p. 2:

From an intuitive perspective the idea of property is perfectly straightforward: the term refers to those things one can own. Although it is both sensible and common to use such language, the law offers a different slant, one that tends to dwell more on the owning element. Property is sometimes referred to as a bundle of rights. That characterization means that property is not in fact a thing, but rather a right, or better, a collection of rights (over things) enforceable against others. Likewise, it has been said that “[t]he concept of ownership is no more than a convenient global description of different collections of rights held by persons over physical and other things”. Explained another way, the term property signifies a set of relationships among people that concern claims to tangible and intangible items.

[58] The version of this passage that appeared in the third edition of Professor Ziff’s book was cited with approval by Sharlow J.A. in Manrell v. Canada, 2003 FCA 128 (CanLII), [2003] F.C.J. No. 408, [2003] 3 F.C. 727 (C.A.), at para. 24. From this passage, Sharlow J.A. concluded, at para. 25, that “[i]t is implicit in this notion of ‘property’ that ‘property’ must have or entail some exclusive right to make a claim against someone else. A general right to do something that anyone can do, or a right that belongs to everyone, is not the ‘property’ of anyone.”

[59] Another well-respected academic author, J.W. Harris, in Property and Justice (Oxford: Clarendon Press, 1996), states, at p. 139:

“Property” designates those items which are points of reference within . . . the rules of a property institution, viz., trespassory, property-limitation, expropriation and appropriation rules. Such items are either the subject of direct trespassory protection or else separately assignable as parts of private wealth.

Therefore, “property” comprises (1) ownership and quasi- ownership interests in things (tangible or ideational); 
(2) other rights over such things which are enforceable against all-comers (non-ownership proprietary interests); (3) money; and (4) cashable rights. That is what “property” is.

[60] Ziff summarizes his description of property as signifying “a set of relationships among people that concern claims to tangible and intangible items”. Harris refers to property as comprising an ownership interest in something that is “ideational”, which I understand to mean something intangible that has been [page582] conceived by the mind. Of note, Harris and Ziff both emphasize that property is a collection of rights over things that can be enforced against others. Such a concept can be seen in the jurisprudence as well. In Saulnier v. Royal Bank of Canada, 2008 SCC 58 (CanLII), [2008] 3 S.C.R. 166, [2008] S.C.J. No. 60, Binnie J. considered whether a fishing licence constituted “property” under the Bankruptcy and Insolvency Act, R.S.C. 1985, c. B-3 (“BIA“) and the Nova Scotia Personal Property Security Act,S.N.S. 1995-96, c. 13 (“PPSA“). He concluded that while a simple licence was likely not property at common law, the bundle of rights attached to the fishing licence was sufficient to qualify it as property for the purposes of the BIA and the PPSA. In particular, the holder of such a licence had a right to engage in an exclusive fishery under the conditions imposed by the licence, and a proprietary right in the fish harvested and the earnings from their sale. Binnie J. further commented that the licence unlocked the value in the fisherman’s other marine assets. The subject matter of the licence, coupled with a proprietary interest in the fish caught pursuant to its terms, bore a reasonable analogy to a common law profit à prendre which was undeniably a property right: see paras. 14, 16, 23, 28, 34 and 43.

[61] In giving a purposive interpretation to the legislation in issue in Saulnier, Binnie J. rejected the traditional common law approach that was followed in National Trust Co. v. Bouckhuyt (1987), 1987 CanLII 4098 (ON CA), 61 O.R. (2d) 640, [1987] O.J. No. 930 (C.A.). In Bouckhuyt, Cory J.A. held, at p. 648 O.R.: “The notion of ‘property’ imports the right to exclude others from the enjoyment of, interference with or appropriation of a specific legal right. This is distinct from a revocable licence, which simply enables a person to do lawfully what he could not otherwise do”. Cory J. went on to hold that the tobacco quota in issue did not qualify as “intangible personal property” under Ontario’s Personal Property Security Act, R.S.O. 1990, c. P.10, as renewal of the quota was subject to the “unfettered discretion” of the Tobacco Board and the quota itself was “transitory and ephemeral”.

[62] The bundle of rights associated with the domain name that Tucows has (as purchaser and registrant) satisfies the attributes of property as described by Harris and Ziff in that at present Tucows can enforce those rights against all others.

[63] As in Saulnier, Tucows derives income from being the holder of the rights in the domain name . [See Note 9 below] It has [page583] 14 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. Unlike the situation of the tobacco quota in Bouckhuyt, renewal of the registration of a domain name at the end of any term for which it has been licensed is not subject to an unfettered discretion but to the UDRP and the UDRP Rules.

[64] While the decisions in Kremner, Saulnier and Bouckhuyt and the academic commentators all emphasize exclusivity of a right as an essential aspect of property, other judicial decisions, such as National Provincial Bank Ltd. v. Ainsworth, [1965] A.C. 1175, [1965] 2 All E.R. 472 (H.L.), hold that other requirements must also be met. In National Provincial Bank, Lord Wilberforce stated, at pp. 1247-48 A.C., that, “[b]efore a right or an interest can be admitted into the category of property, or of a right affecting property, it must be definable, identifiable by third parties, capable in its nature of assumption by third parties, and have some degree of permanence or stability”. A domain name also satisfies this definition of property.

[65] I have already discussed what a domain name is. To summarize, a domain name is an intangible or ideational thing consisting of two parts, one being numerical and the other being a distinctive readable address that enables an Internet user to access a web page. The rights that Tucows has in the domain name have been identified by Renner. Before the WIPO tribunal, Renner sought to have Tucows’s registration set aside and to assume it. Tucows’s ownership of the domain name has a degree of permanency; it has owned the domain name since 2006.

Property Rights in Domain Names

[66] Thus, based on the above definitions from Canadian and other common law jurisprudence, Tucows has a bundle of rights in the domain name that constitutes “personal property” within the meaning of rule 17.02(a). [page584] 
(c) A domain name can be considered to be property in Ontario for the purposes of rule 17.02(a)

[67] In order to ground jurisdiction pursuant to rule 17.02(a), a domain name must not only be property, it must also be property in Ontario. Renner argued that the intangible nature of a domain name makes it impossible for it to be located “in Ontario”. Simply because a domain name is intangible property does not mean that it cannot have a location that allows a court to ground jurisdiction: see, e.g., SRU Biosystems, in which Morin J. held, at para. 32, that the plaintiffs had made out “a very arguable case” that the Canadian patent application filed by the defendants was personal property in Ontario.

[68] Rule 17.02(a) gives the court jurisdiction to settle controversies with regard to rights or claims against personal property. Personal property consists of both tangible and intangible property: see Bryan A. Garner, ed., Black’s Law Dictionary, 8th ed (St. Paul, MN: Thomson/West, 2004), at p. 1254. See, also, Metlakatla Ferry Service Ltd. v. British Columbia, 1987 CanLII 2748 (BC CA), [1987] B.C.J. No. 445, 37 D.L.R. (4th) 322 (C.A.), in which the court held, at p. 325 D.L.R., that the term “personal property” in s. 87 of the Indian Act, R.S.C. 1985, c. I-5 included intangible property, in this case a lease and the debt owing under it. Intangible property refers to personal property that cannot actually be moved, touched or felt, but instead represents something of value such as good will. In Manitoba Fisheries Ltd. v. Canada, 1978 CanLII 22 (SCC), [1979] 1 S.C.R. 101, [1978] S.C.J. No. 78, the Supreme Court held that although good will is intangible in character, it is part of the property of a business just as much as the premises, machinery and equipment employed in the production of the product whose quality engendered it. As such, there is a presumption of compensation for the regulatory taking of this property.

[69] It seems to me, as well, that for purposes of jurisdiction, a domain name is part of the intangible property of Tucows’s business. In Williams v. Canada, 1992 CanLII 98 (SCC), [1992] 1 S.C.R. 877, [1992] S.C.J. No. 36, at pp. 891-93 S.C.R., the Supreme Court developed what is now referred to as the “connecting factors” test, [See Note 10 below] in which the situs of intangible property is determined by where it has the strongest contacts: see Canada v. Folster, 1997 CanLII 6344 (FCA), [1997] F.C.J. No. 664, [1997] 3 F.C. 269 (C.A.), at paras. 15-18. In [page585] this case, the domain name , as a business asset of Tucows and a form of intangible property, has its maximum contacts with Ontario.

[70] More recently, in Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45 (CanLII), [2004] 2 S.C.R. 427, [2004] S.C.J. No. 44, the Supreme Court held, at para. 57, that the applicability of the Copyright Act, R.S.C. 1985, c. C-42 to communications that have international participants depends on whether, when the real and substantial connection test is applied, there is a sufficient connection between this country and the communication in question for Canada to apply its laws consistent with the principles of order and fairness. Binnie J., writing for the court with the exception of Lebel J., analyzed the appropriate test for determining the location of an Internet communication and held, at para. 61, “In terms of the Internet, relevant connecting factors would include the situs of the content provider, the host server, the intermediaries and the end user. The weight to be given to any particular factor will vary with the circumstances and the nature of the dispute.”

[71] By analogy, in this case the connecting factors favouring location of the domain name in Ontario are the location of the registrant of the domain name, as well as the location of the registrar and the servers as intermediaries. The evidence concerning the location of Tucows’s target audience is insufficient for me to draw any conclusion based on it. The location of the registrar is an important consideration because, as Bogdan and Maunsbach point out, at p. 182, without the domain name registrar/administrator being subject to the court’s jurisdiction, questions of the enforceability of the order could arise.

[72] I would hold that for purposes of rule 17.02(a), the domain name is intangible personal property located in Ontario. 4. There is a real and substantial connection to Ontario

[73] Pursuant to Van Breda, if a case falls within rule 17.02(a), a real and substantial connection for the purposes of assuming jurisdiction against the defendant will be presumed to exist. That presumption has not been rebutted by Renner. Accordingly, I would hold that Tucows’s service of its statement of claim on Renner is valid. 5. The appellant’s cross-motion respecting rule 17.06(3)

[74] Having regard to these reasons, it is unnecessary for me to address Tucows’s submissions respecting validation of service after the fact pursuant to rule 17.06(3). [page586] V. Disposition

[75] For the reasons I have given, I would allow the appeal and set aside the order of the motion judge. I would substitute an order that service on Renner outside Ontario is valid and that Ontario has jurisdiction over the dispute between Tucows and Renner. Tucows is entitled to its costs before the motion court judge, which the parties have agreed to round off at $15,000. In addition, Tucows is entitled to its costs of this appeal. Having regard to the submissions made, I would fix those costs on a partial indemnity basis at $24,000. Both sets of costs are inclusive of all taxes and disbursements.

Appeal allowed.

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

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Incorporeal rights are defined as:

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