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Remedies Available in a Court Action
By Eric Macramalla

Courts have considered a number of remedies, including declaratory and injunctive relief, as well as general damages and punitive damages.

In Itravel2000.com Inc. (c.o.b. Itravel) v. Fagan (2001), 11 CPR (4th) 164 (Ont. S.C.J.), the first Canadian court case dealing with a dot-ca domain name, the Plaintiff was a travel retailer and wholesaler, which carried on business as "itravel" and operated a website at itravel2000.com. The Defendant, who was not in the travel business, registered itravel.ca, and indicated that he would sell the domain name to a third party if the Plaintiff did not purchase the domain name for $75,000. The Plaintiff was successful in its application for interlocutory relief, with the Court granting an order restraining the Defendant from selling, transferring, disposing of, pledging or encumbering, dealing with, or using the domain name. This is the typical interlocutory relief sought in cybersquatting cases.

In Innersense International Inc. v. Manegre, [2000] A.J. No. 613 (Alta. Q.B.), the Defendant, a consultant who developed the innersense.com website for the Plaintiff, resigned from her position. The Defendant's brother registered the domain name when it expired and proceeded to offer it back to the Plaintiff for $20,000, as well as advertising it for sale. In granting an interim injunction on an ex parte basis restraining the use of the domain name, the Alberta Court of Queen's Bench held that the "possibly simple and quick transferability and marketability" of the domain name resulted in a finding that the balance of convenience was best served by granting the application for interim relief.

As is typical of trade-mark cases, damages are infrequently awarded in domain name cases, and when they are, they tend to be nominal amounts. In granting permanent injunctive relief in an undefended action in Saskatoon Star Phoenix Group v. Noton, [2001] S.J. No. 275 (Sask. Q.B.), the Court awarded the Plaintiff $5,000 in the way of general damages.

In awarding punitive damages in the amount of $5,000 in the undefended action of eGalaxy Multimedia Inc. v. Bailey, [2002] O.J. Nos. 5002 and 5003, the Ontario Superior Court of Justice held that the Defendant's "conduct deserves public censure, that he committed multiple independent actionable wrongs and that an award of punitive damages would serve the rational purpose of discouraging others from engaging in similar conduct."

This case follows the Saskatoon Star Phoenix Group Inc. v. Noton decision, where the Court noted that an award of punitive damages "may be appropriate in the future if, after several decisions such as this, the defendant or others persist in the activity."



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