Wednesday, December 5, 2018

#379 - stripmeister.ca - MATTER RESOLVED BETWEEN THE PARTIES

The parties settled the dispute, and CIRA posted the correspondence from both the Complainant and Registrant's counsel confirming the Registrant's approval to transfer the Domain Name to the Complainant.

#378 - panavision.ca - TRANSFER GRANTED

The Complainant owns the PANAVISION family of trademarks, and is one of the world's most recognized providers of ultra-precision digital imaging and visual cinematographic equipment and other accessories for the motion picture, television, and related industries. The Registrant is using the Domain Name as a pay-per-click site.  The Registrant filed a deficient response including a cover page, Registration certification and several blank pages. Despite an invitation to submit an amended complaint, he failed to do so.

The Panel held that the Domain Name was registered in bad faith by a serial cybersquatter, Daniel Mullen. The Complainant relied on the numerous unauthorized domain name decisions involving Mr. Mullen: birkenstocks.ca, oscardelarenta.ca, chipotles.ca, royalcanadianlegion.ca, balenciaga.ca, louisvilleslugger.ca, cadillacs.ca, and canadagoosestore.ca.

Interestingly, there was a dissenting opinion of James Plotkin.  He found that the Domain Name was not registered in bad faith because there is no evidence *in this case* that Daniel Mullen registered the Domain Name to prevent the Complainant from doing so. Additionally, he finds that the Panel should not rely on UDRP principles, and that no visitor to the website would think it was the Complainant's website or that the Complainant was affiliated with it. 

You can read the decision here.

Tuesday, November 13, 2018

#377 - knorrbremse.ca - TRANSFER GRANTED

The Complainant manufactures braking systems for vehicles using the KNORR-BREMSE trademark (registered in Canada and in use since 1975).  The Registrant purports to offer to sell goods belonging to the Complainant, and the Complainant's competitors.

The Panel found that the Domain Name was registered in bad faith because the Registrant knew of the Complainant's mark, and was using the mark to bait users into making a purchase on the website, and then switching the products to Complainant's products.

Monday, November 5, 2018

#376 - lumileds.ca - REFUSED


The Complainant owns the LUMILEDS registered trademark (registered after the date of the Domain Name registration) but alleges it commenced use in Canada since 2001.  The Registrant (based in Quebec) also uses the LUMILEDS trademark in Canada (he combined Lumiere (French translated word for Light) and LEDS (light emitting diode in plural), and started his business, Lumileds Inc., after he searched CIPO, and noticed that the Complainant had abandoned the LUMILEDS trademark in Canada.

The Complainant delivered a cease and desist letter, but the matter did not resolve between the parties. 

The Panel refused to decide whether the Registrant had a legitimate interest in the Domain (on the question of whether the legal name of the Registrant must exist at the time of the registration of the Domain Name – since it incorporated Lumileds Inc. after it registered the Domain Name).
Instead, the Panel found that the Domain Name was not registered in bad faith.  The Panel was unable to conclude that the Complainant had been using the mark as of the date of the Domain Name Registration (or that it asserted trademark rights prior to a later-dated 2014 LUMILEDS trademark application).  Additionally, the Panel found that the Registrant had a disclaimer on the site and, despite being competitors, arguably was not trying to drive traffic away from the Complainant’s business.  The Panel found that there are competing claims for trademark and domain name rights, which is outside the scope of a CDRP proceeding.


You can read the decision here.

Tuesday, October 30, 2018

#375 - c2cjournal.ca - TRANSFER GRANTED

The Complainant owns the unregistered trademark, 'c2c Journal' which has been publishing online since 2006 - a tongue-in-cheek play on "Sea to Sea".  The Complainant alleges the Domain was transferred in September of 2017 by an individual employee/contractor of the Complainant to a separate account with the same Registrar.  Although the Domain is still technically owned by the Complainant, it alleges it has lost control over the Domain, and the Registrant has authority to terminate the domain or point it to a different website.

The Panel found that the transfer was made in bad faith because there was great confusion after the Domain was taken out of the Complainant's control, the Registrant obviously knew of the Complainant's rights in the Mark, and the Registrant failed to respond to the allegations.

You can read the decision here.

#374 - wd40.ca and wd-40.ca - TRANSFER GRANTED

The Complainant owns the WD-40 trademark (registered in Canada since 1962,) and does its part to help bring an end to squeaky doors across Canada, through the use of its highly popular lubricant/spray.

The Panel held that the Domain Names were registered in bad faith because the Registrant set up websites offering visitors to join Facebook, and make quick money by using Bitcoin. Sounds too good to be true. The Panel agreed that using the Complainant's trademark for illegal means is bad-faith in general.

You can  read the decision here.

Friday, October 19, 2018

#373 - bmwregina.ca - TRANSFER GRANTED

The Complainant owns the popular BMW family of trademarks, registered in Canada for use in association with vehicles among other goods and services.  The Registrant is a competing auto parts dealer that is using the website by reproducing the BMW design marks, and falsely suggesting a sponsorship or affiliation with the Complainant.

The Panel correctly held that the Domain was registered in bad faith because the web site was offering similar services to the Complainant.

You can read the decision here.