Wednesday, October 18, 2017

#346 - agmbasements.ca and agmrenovations.ca - TRANSFER GRANTED

The Complainant offers basement and interior renovations services in Canada using the AGM trademark.  Although not yet registered as a trademark, the Complainant provided website screenshots showing use of the AGM trademark, and evidence of the registration of a business name (years prior to the registration of this Domain Name).  The Domain Name was used by a competing business, and the text of the web site included the terms "WHY WE'RE BETTER", and was forwarding visitors to the website basementscanada.com.

The Panel found bad faith because the Registrant's business was named Penguin Basements, and the Panel could find no other reason to use the AGM mark in its Domain Name other than to trade on the Complainant's goodwill.

Of note: the Complainant asked for its costs, and the Panel opined that paragraph 12.6 (up to $5,000.00 payment to registrant if complaint commenced in bad faith) and 14.4 (non-refundable fees) indicates that CIRA did not intend for costs to be awarded in these administrative proceedings.

You can read the decision here.

#345 - whatsapp.ca - TRANSFER GRANTED

The Complainant owns one of the world's most popular messaging application services, with over 1 billion active monthly users. Its WHATSAPP trademark was registered in Canada in 2012. The Domain Name was registered in 2015. The Registrant did not respond to the Complaint. 

The Panel found that the Domain Name was registered in bad faith as (1) the Registrant acquired the Domain Name shortly after Facebook announced its acquisition of the Complainant, (2) following delivery of a cease and desist letter, the Registrant offered to sell the Domain Name for an amount in excess of its reasonable out of pocket expenses and (3) the Registrant has engaged in a pattern of this wrongful conduct, registering victoriasecret.ca, nordstrom.ca and celinedion.ca.

You can read the decision here.

Saturday, October 7, 2017

#344 - virox.ca - TRANSFER GRANTED


The Complainant, Virox Technologies, Inc., owns the VIROX TECHNOLOGY INC. trademark (registered before the registration of the Domain Name) and was using the VIROX trademark since 2000, long before the registration of the Domain Name.  Nameshield (and it’s notorious representative, Daniel Mullen) argues that it re-registered the Domain Name after registering it several years earlier, despite providing no evidence to that effect. Not surprisingly, the web site was being used as a pay-per-click site.



The Panel found the Domain Name was registered in bad faith because the “nominal” ownership of the Domain Name is in breach of the CIRA Registration Agreement (Nameshield allegedly was the nominal holder of the Domain Name for Diversey Inc., who owned a VIROX design trademark that was the subject matter of an expungement proceeding).  Interestingly, the Complainant filed an Affidavit from a representative of Diversey Inc., disclaiming any claim to the Domain Name and confirmed that Nameshield is not the nominal holder of the Domain Name (on its behalf).  For that reason, the Panel concluded that Nameshield had no legitimate interest in the Domain Name, and Daniel Mullen suffered another CDRP loss.

You can read the decision here

Friday, October 6, 2017

#343 - dxracer.ca - TRANSFER GRANTED

The Complainant, Jiangyin Dexin Auto Parts (Chair) Co., Ltd. owns the dxracer (with Chinese characters above it) trademark (registered since April 2014 and used since 2010 in Canada) in association with office chairs and premium gaming chairs. 

The Registrant registered its Domain Name in 2012 and operated a web site allegedly offering for sale competitor’s products (and Complainant’s products). Following delivery of a cease and desist letter, the Registrant took down the web site. 


The Panel found bad faith and was persuaded by the content on the web site, which included a review from an upset customer that was not only deceived into believing there was a relationship between the Complainant and the Registrant, but also stated that he was defrauded by the web site owner when he paid for products and received nothing in return. 

You can read the decision here.

Friday, September 15, 2017

#342 - KOODOTEL.CA - transfer granted

The Complainants, Telus Corporation and Indeed Canada Corp., own the KOODO trademark (registered since April 2014) and offer telecommunication services including postpaid and prepaid wireless voice and data services, respectively. 

The Registrant registered its Domain Name in May 2017 and offer "black market" mobile phone plans to its customers (where third parties switch users phone plans to provinces in which less expensive rates are available). 


Although there was a small disclaimer on the website, the Panel found it was clearly intended to be overlooked (bad faith), and concluded that there was no evidence of any personal or business interest in the Domain Name (no legitimate interest). 

You can read the decision here

Friday, September 1, 2017

#341 - myindeed.ca - TRANSFER GRANTED

The Complainant provides the world's largest job's website, and owns the registered INDEED trademark in Canada.  In addition to creating a website that was very similar to the Complainant's (using the Complainant's marks), the Registrant was involved in a vicious phishing scheme to obtain personal information from the Complainant's customers.

The Registrant did not respond  to the Complainant's cease and desist letter. The Panel found bad faith as a result of the similarity in the Restraint's website (in comparison to the Complainant's site), and the fact that the Registrant was seeking contact details and a "utility bill, tax document or business document" from the visitors to the Domain Name.

You can read the decision here.

#340 - cheapoairs.ca - TRANSFER GRANTED

The Complainant registered its CHEAPOAIR trademark in Canada in 2011.  The Registrant added an "s" to the mark, and registered the Domain Name on January 18, 2016. The Panel found that the Domain Name was registered in bad faith because the Registrant directed users to a competitor's website.  Additionally, the after receiving a cease and desist letter, the Complainant parked the page (offering it for sale), and never responded to the Complainant's offer to reimburse the reasonable costs associated with the registration and transfer of the Domain Name to the Complainant.

You can read the decision here.