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Doctrine of Initial Interest Confusion
By Eric Macramalla

The doctrine of initial interest confusion has received limited attention from Canadian courts. Initial interest confusion refers to the use of another's trade-mark in a manner reasonably calculated to capture initial consumer attention even though no actual sale is completed as a result of the confusion (Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). This test of confusion carries with it a lower threshold than the traditional test of confusion captured by subsection 6(5) of the Trade-marks Act. In cases where a domain name functions merely as a surrogate for an Internet IP address, or where confusion as to source is not likely, initial interest confusion merits consideration.

In Law Society of British Columbia v. Canada Domain Name Exchange Corp., [2002] B.C.J. No. 1909 (B.C.S.C.), the Defendant resolved the domain names lawsocietyofbc.ca and lsbc.ca to websites displaying adult content. The Court held that the Defendant had used the disputed domain names to attract members of the public to its websites for the purpose of generating income. The Court found passing off. Although there was no mention of initial interest confusion, the Court did find that the disputed domain names were being used to divert Internet traffic to the Defendant's websites, the contents of which were likely to result in the immediate dispelling of confusion among Internet users looking for the Plaintiff. This finding appears to be compatible with the doctrine of initial interest confusion.

Certain Courts have expressed dissatisfaction with initial interest confusion, holding that it leads to a finding that trade-mark holders have an exclusive right to their marks irrespective of the manner in which the domain name is used, a notion which is incompatible with traditional trade-mark principles (Hasbro Inc. v. Clue Computing Inc., 66 F. Supp. 2d 117 (D. Mass. 1999), affirmed [2000] U.S. App. Lexis 27856 (1st Cir. 2000); The Network Network v. CBS Inc., CV-98-1349 (C.D. Cal. 2000).

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