Dealing with a confusing domain name is challenging. UDRP and CDRP proceedings may not be available if a registrant is operating a competing business. However, as a recent Quebec Court of Appeal decision confirms, where domain proceedings aren’t enough, the law of passing off provides a good alternative.
In Cabanons Fontaine inc.v. 9036-4316 Québec inc. (Cabanons Mirabel), 2022 QCCA 1243, the Plaintiff sought the transfer of domains similar to its own: including cabanonmirabel.com, cabanonsmirabel.ca, and garagescabanonsmirabel.com (the “Transferred Domains”).
The Transferred Domains were owned by a competitor and forwarded to the competitor’s website. The competitor offered services in the Mirabel region, so traditional domain proceedings could have presented challenges. Even in the proceedings, the plaintiff admitted its trademark CABANONS MIRABEL was composed of descriptive terms.
Fortunately, a claim in passing off permitted the Court to order the domain transfer. As the Court of Appeal confirmed, while internet searchers may correct an initial mistaken impression after they’ve arrived at the incorrect domain, the initial interest confusion that leads a searcher to the wrong website is enough to ground a claim in passing off, reminding owners that “there remains the possibility that, amongst the consumers redirected to this website, some will stay there”.