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.

Thursday, October 18, 2018

#372 - potterybarnbaby.ca - TRANSFER GRANTED

The Complainant owns the very popular POTTERY BARN and POTTERY BARN KIDS trademarks, registered in Canada prior to the registration of the Domain Name. Interestingly, the Registrant owns a competing business, pinkiblue, but is using the website as a pay-per-click site. 

The Registrant was represented by counsel and requested adjournments and suspension of the Complaint, which the Panel refused to do. The Panel found that the Domain Name was registered in bad faith because the Registrant owned numerous brand-name .ca domain names including babybjorn.ca, buybuybaby.ca, westcoastkids.ca, and bumbleride.ca, among others. Additionally, the Registrant was obviously capitalizing on the Complainant's marks. 

The Panel had an interesting discussion on the production of without prejudice settlement emails exchanged between the parties (and the potential panel bid in reviewing these documents), and despite offers to sell the domain name for in excess of reasonable fees associated with registering the domain name, it refused to find bad faith on this basis. 

You can read the decision here

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.