Thursday, February 16, 2017

#332 - cathaydragon.ca - TRANSFER GRANTED

The Complainant, Cathay Pacific Airways Limited owns the CATHAY PACIFIC and DRAGONAIR trademarks in Canada.  It previously lost a complained filed with Resolution Canada in July, 2016 without prejudice to seeking further relief by arguing rights in a Mark based on its trade name CATHAY DRAGON (instead of a trademark).

On January 28, 2016, the Complainant announced that it was re-branding its airline to CATHAY DRAGON.  That same day, it applied for trademarks in several countries, including Canada.  The Domain Name was registered 2 days later, on January 30, 2016. The Registrant did not respond.


The Panel found that the re-branding announcement on January 28, 2016 qualifies as evidence that the Complainant began trading under the CATHAY DRAGON trade name, which qualifies as a Mark under the Policy (paragraph 3.2(a)).   The Panel found bad faith based on the suspicious timing of the registration, and because the Registrant was offering the Domain Name for sale for 7,999 EUR. 

You can read the decision here

Thursday, February 2, 2017

#331 - vibram.ca - TRANSFER GRANTED

The Complainant, Vibram S.p.A., is a popular manufacturer of rubber outsoles for footwear. The Registrant is Interex Corporate Registration Services Inc. (often represented by known cyber-squatter Daniel Mullen). The Domain Name was registered on August 31, 2009.

The Registrant attacked the Complainant’s registered trademark, and argued that the Complainant should fail on the basis of the doctrine of laches since the Complaint was filed seven years after registration of the Domain name.  


The Panel correctly found: (1) that this is not the appropriate forum to dispute the validity of a registered trademark, (2) clarified the test for assessing confusion (first impression and imperfect recollection) which is different from a section 6(5) Trademarks Act analysis (see: fordparts.ca decision), and (3) found bad faith because the Registrant has engaged in a pattern of unauthorized domain name registrations containing third party trademarks - there are numerous previous CDRP decisions involving the Registrant and Daniel Mullen.  

You can read the decision here

Tuesday, January 24, 2017

#330 - homedpeot.ca - TRANSFER GRANTED

The Domain name at issue is homedpeot.ca. Home Depot International, Inc. (and Home Depot of Canada Inc.) is Canada’s leading home improvement specialty retailer with 182 stores across Canada. The Registrant registered the Domain Name on November 11, 2005, and Home Depot registered the HOME DEPOT trademark in Canada in 1999, but entered the Canadian market in 1994. 

The Registrant, a known cyber-squatter, Terry Davies, did not respond. The Panel found there was evidence of bad faith because the Registrant was operating a pay-per-click website linking users to competing businesses (including Lowe’s) and the Registrant had previously typo-squatted other domain names belonging to rights holders in the past, including, aircanadaa.ca, costcoo.ca, cotco.ca, and toytota.ca.

You can read the decision here

Wednesday, December 21, 2016

#329 - capitalonecallcentrejobs.ca and emploiscentredappelscapitalone.ca - TRANSFER GRANTED


The Complainant owns the CAPITAL ONE trademarks.  The Domain Names were registered in May, 2014.  The Domain Names resolved to websites containing information about the Complainant, and use of the Complainant's trademarks.  The websites appear to be some form of phishing campaign - there was a large red APPLY ONLINE HERE button on the website. 


The Panel found that the Domain Name was registered in bad faith because the Registrant was attempting to pass itself off as the Complainant. 


You can read the decision here.

#328 - huronconsultinggroup.ca - TRANSFER GRANTED

The Complainant owns the HURON CONSULTING GROUP trademarks registered since February 17, 2017 and has conducted business in Canada since at least 2005.  The Domain Name was registered on July 8, 2016 and resolves to a replica of the Complainant's website containing.  Following delivery of a cease and desist letter, the Registrant parked the website and it does not currently resolve to any active website. 


The panel found bad faith because the domain name was involved in a malicious phishing scheme purportedly offering employment with the Complainant and soliciting applications and other materials from the recipients of the emails. 


You can read the decision here.

#327 - terminix.ca - TRANSFER GRANTED

The Complainant owns the TERMINIX trademark registered for use in association with pest control services.  The Complainant has been using the trademark in Canada since 1982. The disputed Domain Name was registered on November 17, 2016 and is a typical pay-per-click website.


The Panel found that the Domain Name was registered in bad faith because there was evidence indicating that the Registrant was associated with another website offering services that compete with the Complainant.  The owner of this website was listed as the owner of the copyright on the other site which implies it has a commercial interest in the website. 


You can read the decision here.

#326 - picmonkey.ca - TRANSFER DENIED

The Complainant owns the PICMONKEY trademark and offers online photo-editing software called "PicMoney".  The PICMONKEY trademark was registered as of February 26, 2016 for use in association with image processing software design.  The Domain Name was registered on April 10, 2012 and operates as a pay-per-click website.  After the Complainant delivered a cease and desist letter, the Registrant's domain broker "Shaun" indicated the Registrant might engage in negotiations to sell the Domain but only after the Complainants cancelled the proceeding.


The Panel found that the filing date of the trademark application (March 12, 2012  - approximately one month before the Domain was registered) is not sufficient to establish use of the trademark in Canada.  In this Complaint, there was no evidence filed of any use of the PICMONKEY trademark in Canada before the Domain Name was registered.


You can read the decision here.