COURT FILE NO.: CV-10-406431

DATE: 20120227

SUPERIOR COURT OF JUSTICE – ONTARIO

RE: TUCOWS.COM CO.
Plaintiff/Responding Party

• and -

HOLLEY PERFORMANCE PRODUCTS, INC.
Defendant/Moving Party

BEFORE: MATLOW J.

COUNSEL:
P. John Brunner , for the Plaintiff/Responding Party

Bruce W. Stratton and Vincent Man , for the Defendant/Moving Party

HEARD: DECEMBER 7, 2011 AT TORONTO

ENDORSEMENT

[ 1 ] On January 26, 2012, I released an endorsement dismissing this motion by the defendant for an order staying this action pending the outcome of a related proceeding brought by the defendant against the plaintiff in Kentucky and stating that written reasons would follow. This endorsement contains those reasons.

[ 2 ] A motion brought by the plaintiff in the Kentucky Court for an order dismissing or staying that proceeding has been dismissed.

[ 3 ] The plaintiff, an Ontario company, seeks declaratory relief in this action to protect its proprietary interest in the internet domain name, <earls.com> solely within Ontario. It is now clear from the judgment of the Court of Appeal in Renner , 2011 ONCA 548 , [2011] O.J. No.3576 that this action has a real and substantial connection with Ontario and that this court has jurisdiction simpliciter over this action.

[ 4 ] The plaintiff has no connection whatsoever to Kentucky. Its principal offices are in Ontario and all of its activities relevant to this action are carried on in Ontario. The defendant’s relevant activities are also carried on in Ontario.

[ 5 ] The plaintiff does not challenge either the validity or registration of any of the defendant’s trademarks with which the defendant alleges that the plaintiff’s domain name competes.

[ 6 ] The plaintiff’s three intended witnesses reside in Ontario and the dispute between the parties is likely to be determined in accordance with Ontario law. As well, the declaratory relief claimed by the plaintiff is within the jurisdiction of this court and can be granted in Ontario, if warranted. As well, any claim for additional supplementary relief, or enforcement assistance, can be dealt with in this court. I doubt, however, that the Kentucky could grant similar relief or assistance or, if it could, whether its judgment could be effectively enforced in Ontario.

[ 7 ] Although there may be some overlap between the issues in this action and those in the Kentucky proceeding, there are many differences. Although it is only the law of Ontario that is likely to be applicable in this action, it is likely the law of Ontario and Kentucky that will have to be applied in the Kentucky proceeding to give effect to the various statutory provisions that are applicable there but not here. As well, I doubt that those statutory provisions could have application to events which occurred entirely in Ontario.

[ 8 ] As well, the proceeding in Kentucky is one that must be heard with a jury whereas this action could be heard by judge alone. Having regard to the technical issues that will have to be addressed at trial, the appeal of a judge alone trial is obvious and that option should not lightly be taken away.

[ 9 ] Accordingly, the defendant has not persuaded me that the balance of convenience favours Kentucky and that this action should be stayed, even temporarily. In any event, the right of the plaintiff to have a hearing where all of its juridical rights can be protected outweighs any considerations of convenience.

MATLOW, J.

RELEASED: February 27, 2012