Tuesday, October 2, 2018

#371 - rxbar.ca - TRANSFER GRANTED

The Complainant owns the popular RXBAR registered for use in Canada in association with protein bars and other goods.  The Complainant uses the rxbar.com website. The Complainant established rights in the mark (registered February 10, 2016) and well prior to the June 1, 2017 registration date of the Domain Name.


The Panel found that the Domain Name was registered in bad faith because it was offered for sale to the Complainant in the amount of $50,000.00 USD.  The Respondent attempted to argue that the offer was an "I don't want to sell price", but the Panel found that this was an offer in excess of the Registrant's costs.


Despite attempting to argue that the Registrant was creating a gathering place to create a "RelaxBar", or "social bar business", the Panel found that it did not have a legitimate interest in the Domain Name because it provided no evidence of any action to establish its business.

You can read the decision here.

Thursday, September 6, 2018

#370 - basfproducts.ca - TRANSFER GRANTED

The Complainant stated that it is the largest chemical company in the world, and owner of the BASF trademark, with a family over 1,500 trademarks worldwide.  The Domain Name is not in use, and the Registrant did not respond to the Complaint.

The Panel found that the Domain Name was registered in bad faith because the trademark was so well known.  Additionally, there was evidence that the Registrant registered basfproduit.com, evidencing knowledge of the BASF trademark (and the French language, of course!).  Additionally, the panelist cited the "passive holding doctrine" in the WIPO overview, and given the strength of the Complainant's trademark, agreed that "good faith use" of the Domain Name is implausible.

You can read the decision here.

Tuesday, June 5, 2018

#369 - deltanine.ca - TRANSFER GRANTED

The Complainant is based in Winnipeg, Manitoba and obtained a production licence from Health Canada under the Marijuana for Medical Purposes Regulations in December 2013 (and a license to distribute medical cannabis was granted in March 2014).  It owns the family of unregistered trademarks DELTA 9, which were used in Canada since at least as early as December 2013.  The Registrant is a "competitor" of the Complainant operating an illegal marijuana dispensary (which has been robbed, raided by the Police and shut down several times).

The Panel found that the Domain Name was registered in bad faith because the services offered by the Registrant compete with the Complainant (albeit illegally so). Additionally, the Panel held that there is a real danger to the goodwill of the Complainant's business if internet users are diverted to an illegal business.

The Decision can be found here.

Thursday, May 24, 2018

#368 - redwingshoes.ca - TRANSFER GRANTED

The Complainant (founded in 1905) owns the family of RED WING trademarks, and registered for use in association with footwear. The Domain Name was registered in July, 2017, and the Registrant did not respond to the Complaint.  Currently, the Registrant directs consumers to a third party site at reddhart.ca, which sells footwear protects for brands other than the Complainant.

The Panel found that the Domain Name was registered in bad faith because the Registrant was attempting to find buyers for its footwear products.

You can read the decision here.

Monday, May 21, 2018

#367 - kijijiautos.ca - TRANSFER GRANTED


The Complainant is the owner of the KIJIJI registered trademark in Canada, the premiere online classified’s service in Canada to buy/sell/trade. 


The Panel found that the Domain Name was registered in bad faith because the Registrant was using a pay-per-click website offering “competing” services, as one of the links was “cheap used BMW cars”. 

You can read the decision here.

Wednesday, May 2, 2018

#366 - thepetplan.ca - TRANSFER GRANTED


The Complainant is an Allianz Insurance subsidiary, and owns the PET PLAN trademark, registered for use in association with insurance brokerage services in connection with health insurance for domestic animals (registered in Canada since 1996). The Domain Name was registered on December 5, 2017.  The Domain Name was being used as a pay-per-click website, and was being offered for sale $2,500.00, well in excess of any reasonable out-of-pocket expenses.  The Panel found that the Domain name was registered in bad faith – in part because of the conflicting e-mail responses to BCICAC following delivery of the Complaint (no formal response was provided).  He first stated that he intended to use the Domain Name as a hobby blog.   He later said that he wished to delete the Domain name and intended to do so “from day 1”. 

You can read the decision here

Wednesday, April 4, 2018

#365 - lemetropolitain.ca - TRANSFER GRANTED

The Complainant publishes a French language weekly newspaper, Le Metropolitain within the Greater Toronto Area.  It first published the newspaper in 1993, with weekly readership of approximately 10,000 people. The Complainant registered LE METROPOLITAIN as a trade name in 2013.  The Registrant publishes a weekly French language newspaper called L'Express, and is a main competitor of the Complainants.

The Complainant alleges that the harmful conduct includes directing visitor's to the Registrant's website (l-express.ca) which reduces the amount of revenue that the Complainant is able to generate from advertisers.

Although no formal response was provided, the Registrant agreed to "voluntarily release the domain name".  However, the Complainant requested the decision and the Panel found that the Domain Name was registered in bad faith because the Registrant chose the Domain Name with a view to attracting business from those that recognize the Complainant's trademark. Given that the two parties are direct competitors, there is little doubt that the Registrant was aware of the Complainant's trademark at the time it registered the Domain Name.

You can read the decision here.