BRASIL Y BELLEZA S.L., from now referred as B&B, is a company which is dedicated to the online wholesale of hairdressing and cosmetic products. On April 25, 2019, B&B filed before the Commercial Courts the following combined lawsuits: declaratory action of disloyalty, cessation of the disloyal conduct, removal of the produced effects, and action for damages against the defendant MY WAY BARCELONA, from now referred as MYWAY, a limited company dedicated to the sale of hairdressing and cosmetic products.

The complaints were based on the fact that both companies use similar domain names for online sales: brasilybelleza.com and bellezabrasil.com/es, respectively.

DECISION OF THE COURT

Confusing acts

Does the use of a similar domain induce consumers to confusion or risk of association about the business origin of the products?

Domain names do not constitute an intellectual/industrial property right, nor do they give their owner a monopoly or exclusive right.

However, the court established that, although B&B does not have a monopoly over the use of the domain name, the question to be determined was whether MY WAY’s use was in accordance with fair dealing or whether it was intended to mislead the consumer as to the business origin of the services.

My way uses a second domain name very similar to that of B&B, altering the order of the nouns “Brasil/Belleza” and eliminating the copulative conjunction “and”, on the website which is dedicated to the sale of similar products, some identical as they were supplied by the respondent.

The plaintiff has provided evidences from customers – end users and distributors – who claim to have suffered confusion. The respondent submitted an expert report in which the differences in aesthetics, technology, SEO and SEM positioning and the products used between the plaintiff’s and respondent’s websites were delimited.

The court deduced that “The disloyalty of the confusion does not arise from taking advantage of the good name of another to attract customers, but from the introduction, in the process of communication with the clients of elements which are suitable to provoke market decisions based on an incorrect representation of the reality of the identity or the business or professional origin of an activity, services or establishments”. Moreover, the purpose of this unlawful competition offence is not so much to protect businesses as to protect consumers in their market decision-making.

Therefore, on this point, the court found that the unfair practice was established by proving that MY WAY used generic terms, “belleza” and “Brasil”, for the second domain name of a website dedicated to the sale of beauty products with Brazilian origin.

Although the differences between the parties’ websites were proven, they were not sufficient to avoid customer confusion. The use of the second domain name “bellezabrasil” for identical products to those sold online by B&B was a decisive element in confusing customers as to the business origin of those products, and the complaint should therefore be upheld on this point.

Taking unfair advantage of the reputation of the other party in the marketplace

In relation to this claim, the court rejected it, as the claims indicating the infringement of article 12 LCD were not proven, since, according to the definition of “exploitation of another’s reputation”, it can be deduced that the purpose of the act is not to confuse the public, but to equate one’s own product with that of another, so that the reputation of the latter benefits the former. Therefore, the unfairness of the conduct requires proof of the existence of a reputation or goodwill and that undue advantage has been taken of it.

Imitation acts

The court also dismissed the infringement of acts of imitation, finding that the legal requirements were not met, in addition to the fact that, as the SC ruled at the time in a judgment of 16 December 2011, “it is necessary to make a factual and legal delimitation of the types indicated, without it being possible to make a list of historical facts, in order to then defer to the court, the selection of the type it considers appropriate”.

Breach of good faith

Finally, the court ruled that, to begin with, recourse to art. 4 LCD requires identifying the reasons on which the unfairness of the conduct is based (STS 24 November 2006), without it being sufficient to cite the precept in the legal grounds of the claim (STS 19 May 2008). And that it can only be applied when the act that infringes it is expressly specified and, furthermore, said act is not typified in other rules (STS 7 June 2000 and 28 September 2005). For these reasons, the mere allegation of unlawfulness by the plaintiff was also unsuccessful.

Damages

As the damages alleged by B&B were not disputed, they were accepted in the form defined in the expert’s report.

The claim brought by BRASIL Y BELLEZA S.L. against MY WAYBARCELONA S.L. was upheld in PART, declaring that the defendant had committed a disloyal act of confusion, and declaring that it must cease using the domain name bellezabrasil.com/es and pay the plaintiff 31,070 euros.

SJM B 12370/2021 – ECLI:EN:JMB:2021:12370 5 Noviembre de 2021