Recent Case Notes & Commentary

Essential Features of the Canadian Policy

L’Oréal SA & L’Oréal Canada Inc. v Victor Silva.

Disputed Domain Name: myloreal.ca

Date of Registration of Domain Name: October 20, 2011

Date of Registration of L’ORĖAL mark: August 12, 1921

Date of decision: May 1, 2013

Policy: CIRA Domain Name Dispute Resolution Policy

Provider: British Columbia International Commercial Arbitration Centre


Why is this case interesting?

This case, which involved a successful Complaint against a Registrant who had registered a domain name containing the Complainant’s longstanding registered mark for the purpose of profiting from a false association with the Complainant, is a good illustration of the CIRA Domain Name Dispute Resolution Policy in action. This policy, while bearing a strong resemblance to the UDRP, differs from it in a number of regards, as explained in this excellent post by Canadian lawyer Eric Macramalla.


For our purposes of this case, please note:

  • The Canadian Presence Requirements – the Complainant must either be a resident of Canada or the owner of a corresponding Canadian trade-mark registration.

  • The CDRP requires that the Complainant’s trade-mark rights predate the registration of the disputed domain name.

  • The four bad faith factors under the UDRP are not exhaustive, while the three factors contained in the CDRP are.

  • In contrast to the UDRP’s requirement that the Complainant establish ‘registration and use’ in bad faith, the CDRP only mentions bad faith registration.

  • The party known as the Respondent in UDRP proceedings is known as the Registrant in CDRP proceedings, which unfortunately leads to the use of inelegant tautologies such as ‘the Registrant registered’ when recounting CDRP cases.

Specifically, this decision demonstrates that the same set of facts can give rise to multiple bad faith factor findings. While only one need be made out for a Complaint to succeed, the Panel has performed a valuable service for students of domain name cases by exhaustively outlining how each bad faith factor is made out.


Canadian presence requirements:

L’Oréal Canada Inc is a corporation under the laws of Canada, and as such, satisfies s 2(d) of the Canadian Presence Requirements.


The Complaint related to a Disputed Domain Name that included the exact word component of the L’OREAL mark, which is owned by L’Oréal SA and was registered in the Canadian Intellectual Property Office, thus satisfying s 2(q) of the Canadian Presence Requirements.


As such, both parties comprising the ‘the Complainant’ satisfy the Canadian present requirements.


Facts:

The Complainant alleged that the domain name registered by Victor Silva (‘the Registrant’) is confusingly similar to its ’famous and well-known [L’ORĖAL] trade-mark’ that was registered in Canada in 1921. The Registrant then used the Disputed Domain Name to redirect to a page containing sponsored links relating to the products of the Complainant and its competitors. The page also displayed a notice advising visitors that the domain name is available for sale, at a starting price of $8,500 US Dollars. The Complainant requested that the Domain Name be transferred, contending that the Registrant lacked an interest in the Disputed Domain Name, which it registered in bad faith.


The Registrant did not file a Response.


Confusingly Similar

Taking into account Paragraphs 3.3 and 1.2 of the Policy, the Panel found the Disputed Domain Name to be confusingly similar to the Complainant’s registered Mark on the basis that it incorporates the whole of the Mark, while adding ‘the non-distinctive element “my”’ and omitting the Mark’s apostrophe. The Panel invoked Magna International Inc. v. Victor Silva, Case 00212, September 13, 2012 in support of the proposition that the word “my” is not ‘prima facie sufficiently distinctive to distinguish the disputed domain name from the Complainant’s mark’. It was also noted that ‘the addition or deletion of grammatical marks…are insignificant changes, insufficient to reduce the identity or confusing similarity’.


Registered in bad faith for the purpose of selling the domain name to the Complainant – 3.5(a)

The Panel was satisfied that the Complainant made out bad faith by the Registrant pursuant to Paragraph 3.5(b) of the Policy. Firstly, the Registrant was attempting to be profit from sponsored links associated with the Complainant’s Mark. Secondly, evidence showed that Registrant had offered to sell the Disputed Domain Name to the Complainant ‘for a reasonable value’. The redirected web page displayed a notice offering to sell the domain name for $8500USD, and then at a lower price of $750USD, both of which are ‘well in excess of the out-of-pocket costs directly related to the registration of the Disputed Domain Name (Government of Canada, on behalf of Her Majesty the Queen in Right of Canada v. David Bedford in his own name and doing business as Abundance Computer Consulting, CIRA Case 00011, May 27, 2003). Thirdly, the Panel intimated that the Registrant’s failure to Respond to a Cease and Desist letter could be construed as evidence of bad faith, referencing Spafinder, Inc. v. Ontario Spa Inc. CIRA Case 00108, August 18, 2008.


Registered in bad faith to prevent the Complainant from registering its mark as a domain name – 3.5(b)

This argument succeeded on the basis that the Registrant had previously registered at least five other domain names containing trade-marks belonging to well-known brands. The Panel cited Handi Foods Ltd. v. Bob Jenkins, CIRA Case No. 00128 for the proposition that ‘as few as two domain name registrations of third party trade‐marks were sufficient to establish that a Registrant had engaged in a pattern of registering domain names that incorporate third party trade‐marks.’ This claim was bolstered by the fact that the Registrant had been found on a number of previous occasions to have abusively registered and used third party trade-marks.


Registered in bad faith for the purpose of disrupting a competitor – 3.5(c)

The Panel agreed with the Complainant that the Registrant’s use of the Disputed Domain Name cast him as a ‘competitor’ and was ‘likely to cause consumers to believe that the Disputed Domain Name [was] endorsed, sponsored or approved by the [Complainant]’, thereby disrupting its business. This was because the Registrant used the Complainant’s whole mark without permission to register a domain name whose corresponding website displayed sponsored links associated with the Complainant’s products. (citing Magna International Inc. v. Victor Silva, CIRA Case N0.00212)


Registered in bad faith to attract users for commercial gain by causing a likelihood of confusion – 3.5(d)

The Complainant satisfied the burden of proof in relation to this allegation. As the Panel noted, the Registrant ‘intended to capitalise on the reputation of the Complainants’ L’ORĖAL Mark by offering the Disputed Domain Name for sale to the legitimate owners of the L’ORĖAL Mark and to divert Internet users seeking information about the Complainants’ to its own website in order to earn revenues through the sponsored links published on its website.’


Legitimate interest of the Registrant

The Panel was satisfied that, as required by Paragraphs 3.4 and 4.1(c), the Registrant lacked a legitimate interest in the Disputed Domain Name. This was most likely due to the well-known L’ORĖAL mark predating the Disputed Domain Name’s registration by close to a century, combined with the finding that the Registrant registered (and used) the Domain Name for the purpose of profiting from a false association with the Complainant.


Order

The Panel ordered that the Disputed Domain Name be transferred to the Complainant.