As more businesses move online, the value and importance of domain names and online trademark enforcement grows. The Superior Court of Quebec has reaffirmed that a confusing domain can land your business in legal trouble.
The dispute arose between the unregistered trademark of Cabanons Mirabel, and confusing domain names chosen by a competitor. Cabanons Mirabel enforced its unregistered trademark by bringing a claim of passing off in the Quebec Superior Court for use of three domain names that contain the words "cabanon(s) mirabel".1
Cabanons Mirabel is a Quebec-based company that has been designing, manufacturing and distributing sheds and garages for over 30 years using the unregistered trademark CABANONS MIRABEL. Cabanons Mirabel acquired the domain name cabanonsmirabel.com in 2001 and has since been using this website to sell its products.
Co-defendant Cabanons Fontaine is also a Quebec-based company that has been engaged in the manufacture and distribution of sheds and garages for over 40 years. Cabanons Fontaine owns the registered word mark: CABANONS FONTAINE INC. & DESSIN. In 2006, Cabanons Fontaine registered the domain names: cabanonmirabel.com, cabanonsmirabel.ca and garagescabanonsmirabel.com which redirect to its website hosted at cabanons.com.
Cabanons Mirabel alleged that the defendants used the impugned domain names to redirect internet users to their own website. The Court agreed, finding that the use of the impugned domain names by the defendants created confusion, thereby constituting passing off pursuant to section 7 b) of the Trademarks Act.
Confusion with an unregistered, descriptive trademark
Of particular note, Cabanons Mirabel was successful despite its relatively descriptive name, and the absence of a trademark registration.
While the Cabanons Mirabel was both unregistered and not inherently distinctive owing to its descriptive nature, the Court nonetheless concluded that in light of its prolonged use (30 years) and the plaintiff's considerable advertising, that CABANONS MIRABEL gained a secondary meaning for the local consumers and had acquired distinctiveness.
Confusion is evaluated at the moment the consumer first encounters the mark, before arriving at the website
The Court determined that redirecting an internet user through a domain name made up of the brand or trade name of others constituted passing off. Notably, the website to which the impugned domain names were linked, does not itself bear the expression "Cabanons Mirabel" and clearly displays the distinct company logo of Cabanons Fontaine. In this regard, Cabanons Fontaine argued that there could be no possible confusion as the consumers know perfectly well with whom they are doing business once they reach the website. The Court nonetheless found that the impugned domain names were likely to cause confusion.
The Court held that when evaluating confusion, the first impression test must be applied at the moment when the consumer first encounters the domain name and not at the consumer's arrival at the website. Conduct that occurs after a consumer encounters a mark in the marketplace and any additional information obtained by a consumer is not relevant to a proper confusion analysis.2
Consequently, if an Internet user, having a vague memory of the CABANONS MIRABEL brand, was likely to be deceived by the domain names of the defendant and redirected to its site, the required confusion exists, regardless of whether it is subsequently dissipated.
Domain names, keywords, and keyword insertion: are you confused?
Cabanons Mirabel provides another building block in Quebec around online confusion, following a 2010 Superior Court of Quebec decision regarding online brand confusion arising from keyword use.
In Chocolat Lamontagne v Humeur Groupe Conseil inc3, the Court concluded that the defendant's purchase of the keywords "Chocolat Lamontagne" from an internet search engine for comparative advertising purposes did not constitute unfair competition. The defendant, a direct competitor of the plaintiff, had purchased several keywords from Google AdWords including "Chocolat Lamontagne" such that, a Google search using "Chocolat Lamontagne" generated search results which included a sponsored hyperlink to the defendant's website.
However, in addition to generating search results, the defendant had used "keyword insertion", where the keyword search term is incorporated into the title of the advertisement. Here, the hyperlink to the defendant's site would read "Alternative to Chocolat Lamontagne".
The Court opined that the use of keywords to describe itself as the plaintiff's competitor to internet users-not as the competitor itself–did not constitute unfair competition or passing off. In such cases the Court noted that the internet user makes a choice to investigate the competitor and the advertiser cannot be held liable for having created the opportunity to be reached.
Whether a trader purchases a competitor's trademark as a keyword or as a domain name, the result is the same: an online search for that competitor will yield results for a trader's own goods and services. Purchasing a keywords, by itself, is not delivery of a message. What is key is how the a trader presents itself to consumers. The Court noted in Chocolat Lamontagne that there would be no initial confusion upon first impression because the use of the word "alternative" in the hyperlink generated indicates to the consumer that they are not in contact with the plaintiff.
An online presence is now fundamental for all businesses. The Superior Court of Quebec's ruling indicates that provincial courts are taking steps to close the gap between commercially accepted online practices and the protection offered by the Trademarks Act.
1. 2020 QCCS 1419
2. Masterpiece Inc v Alavida Lifestyles Inc, 2011 SCC 27 (CanLII), [2011 2 SCR 387 at para. 72
3. 2010 QCCS 1419
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