## Facts

- A newspaper publisher operated a widely distributed daily newspaper and an associated website under a “StarPhoenix” name.
- An individual registered multiple domain names incorporating that name, including domains corresponding to the newspaper’s brand.
- He operated a website under a confusingly similar domain whose main page was designed to look the same as the publisher’s home page, but with substituted advertising.
- He used search-directing techniques (including metatags) intended to divert users seeking the publisher’s site to his site.
- After receiving a demand to stop, he refused and offered to sell the relevant domain names to the publisher, stating that resale was his intent.
- The publisher sued for passing off; the defendant did not defend and was noted in default.
- The court proceeded to assess damages and decide injunctive and related relief, including disposition of the domain names and costs.

## Issues

1. What amount of compensatory (general) damages should be awarded for passing off on the facts deemed admitted by default?
2. Whether the defendant’s conduct justified punitive (exemplary) damages.
3. Whether the court should grant a permanent injunction and order transfer of the disputed domain names to the plaintiff.
4. Whether elevated costs were warranted, and in what form.

## Decision

- The court awarded $5,000 in general damages for passing off.
- The court denied punitive damages.
- The court granted a permanent injunction restraining further passing off and ordered transfer of three domain names to the plaintiff.
- The court awarded lump-sum costs of $7,500, exceeding ordinary party-and-party costs.

## Legal Principles

- Passing off can occur online where a defendant uses a confusingly similar domain name and imitation website presentation to misrepresent association with the plaintiff and divert traffic, thereby risking harm to goodwill.
- General damages for passing off may be modest where the misconduct is short-lived and evidence of measurable harm is limited, even if the conduct is intentional.
- Punitive damages require conduct that is “malicious, oppressive and high-handed” and that offends the court’s sense of decency; deliberate online imitation does not automatically meet this threshold.
- Equitable relief for online passing off may include a permanent injunction and a mandatory order compelling transfer of domain registrations to prevent continued or future confusion.
- Where a defendant ignores warnings, forces litigation, and then defaults, a court may fix elevated costs on a lump-sum basis to reflect the unnecessary expense imposed on the plaintiff.

## Conclusion

The court treated deliberate domain-based imitation as actionable passing off, awarded limited compensatory damages due to minimal proven harm, declined punitive damages, ordered injunctive relief including transfer of the domains, and imposed elevated lump-sum costs because the defendant’s conduct compelled and prolonged the proceedings.


Saskatoon StarPhoenix Grp. Inc. v. Noton, 206 Sask. R. 106 (Sask. Q.B. 2001)