SYRELI: trademark vs. a pet’s name

While certain cases inevitably reveal the holder’s lack of legitimate interest and/or bad faith, others require the parties’ interests to be carefully weighed, all the more so when the holder presents a rather unusual response to the SYRELI College.

Such was the case of a demand on which the College ruled in September 2021, revolving around the following question: where the plaintiff holds the rights to a well-known brand name, how much weight can be given to the response of a domain name holder quoting his or her pet’s name to contest the demand?

The opposition between a rights holder, a world giant in eyewear, and a dog owner

In this case, the plaintiff was the Italian company Luxottica Group SpA, a world leader in the manufacture and distribution of eyewear frames under various brands, notably “Ray-Ban”. It sought the transfer to itself of the domain name “rayban.fr”, registered on 21 October 2011 and held till now by a natural person unknown to the company.

In its demand, the company alleged infringement of its intellectual property rights, specifically its “Ray-Ban” trademarks. In response, the holder of the contested domain name asserted that he had registered it with a view to creating a blog dedicated to his dog, named “Rayban”.

Unsurprisingly, the SYRELI College acknowledged that the Italian company had standing since the domain name was almost identical to the Plaintiff’s trademarks.

The holder’s good faith and legitimate interest called into question given the Plaintiff’s established renown

Relying on the evidence provided by the parties, the College alluded to the worldwide renown of the “Ray-Ban” brand, which has been held by the Plaintiff since 1999, given the extensive marketing and advertising of the products designated by this term. It also highlighted the fact that the domain name in dispute used the entire term “Ray-Ban” to which the company held prior intellectual property rights.

Apart from the actual composition of the domain name, what of its effective exploitation by the holder?

To start with, the College noted that the dog’s pedigree certificate presented by the holder as part of his response made no mention of the name “Rayban”.

Added to this was the affidavit of a relative of the holder indicating that the holder had indeed been the owner of a dog, since deceased, officially called “London de la V.” at birth by the dog breeder but called “Rayban” by all the family throughout its life.

The holder also provided a photograph of his dog in his company as well as an extract from a newspaper referring to a dog show, without it being possible to identify in this extract a dog belonging to the holder and answering to the name “Rayban”.

The SYRELI College further noted that since the date of its creation, the domain name “rayban.fr” has redirected to a page showing a photograph of a puppy accompanied by the following text: “Welcome to the blog that I’ve decided to create for my dog Rayban! For any questions, you can contact him at the following address: [anonymisation]@rayban.fr Woof woof!” ». No blog seems to have been created on the basis of this web page. However, in his arguments, the holder declares and reiterates his intention of creating a blog.

Lastly, the College highlighted the fact that for ten years the Holder has refused all the Plaintiff’s price offers, at the same time asking it to offer more.

In short, there is no document establishing with certainty that the website to which the domain name points is actually dedicated to the Holder’s pet and that this animal’s name is indeed “Rayban”.

For all these reasons, the College considered that “the Holder could not be unaware of the existence and rights of the Plaintiff” and that he “had registered the domain name mainly with a view to selling it in some way or other to the holder of an identical name, the right to which is recognised, and not to actually operating it”^[1]. 

This decision is in line with the tenor of earlier decisions of the WIPO’s Arbitration and Mediation Centre

The principle established seems to be the following: holders of domain names cannot use their pets’ names to justify registration of these names when they are similar or identical to the brand of a rights holder.

To explain this principle, WIPO has already recalled some obvious facts in analogous cases^[1]:

• As simple as this might appear, pets cannot be the protagonists in a dispute resolution procedure.

• It is difficult to establish proof of the date on which the animal’s name was chosen.

• Accepting this kind of defence argument would lead to the registration of domain names identical or similar to well-known brands being authorised simply because the holders have or had pets with the same name as the brand.

In conclusion, there is nothing to stop a holder registering a domain name in honour of his pet if this name is personal, creative, original… and does not infringe the rights of third parties!

^{[1] Decision No. FR-2021-02484}

^{[2] For example: YUM! Brands Inc. and KFC Corporation v. X., NAF Claim Number 212651 and X. v. Y. – Case No. D2016-2496}