Wednesday, May 23, 2012


The Complainant established its case and the panelist therefore directed the transfer of to the Complainant.
The registrant (Ryan Thompson) did not respond to the Complaint. General Motors LLC is a well-known automotive manufacturing company.  The CHEVROLET trade-mark was registered in Canada in 2005, but used as early as 1957. The ORLANDO trade-mark also relied upon by the Complainant is based on proposed use in Canada (the mark was allowed in August, 2009 and 2 extensions of time were granted by CIPO).  The Registrant’s Domain Name is currently being used as a “pay-per-click” site. The section 3.3 analysis will assist rights-holders given the Panelist’s acceptance that a Domain Name comprised of a registered trade-mark together with a proposed-use trade-mark application is confusingly similar.  The panelist would have accepted the CHEVROLET mark on its own given the dominance and distinctiveness of the mark.

Friday, May 11, 2012

#189 - Ebates Canada, Inc. v. Cranhill & Company (Complaint dismissed)

The Complainant did not establish its case and the panelist therefore dismissed the Complaint.

The Registrant (Cranhill & Company) responded to the Complaint. The Complainant is the exclusive licensee of the name and trade-mark EBATES, owned by its corporate parent, Ebates Performance Marketing.  The Complainant’s corporate parent filed a trade-mark application for the EBATES mark, which is currently being opposed by the Registrant.    The issue in this case was whether the Complainant had rights prior to the date of registration.  The domain name was registered in October, 2000. The Complainant was not incorporated until 2011.  Although the Complainant stated that first use of the mark occurred in August 1999, the panel found that the parent company licensor was not a Complainant (likely because it does not meet the Canadian presence requirements) and therefore dismissed the Complaint. 

Monday, May 7, 2012

CDRP Summary #188 - Oakley, Inc. v. Zhou Yayang (Transfer granted)

The registrant (Zhou Yayang) did not respond to the Complaint. Oakley, Inc. is well known throughout the world based on its association with high-performance sunglasses, prescription lenses and frames, and other merchandise. Since at least 1979, the OAKLEY trade-mark has been used in Canada. The Registrant registered the Domain Name ( in December, 2011. The 'confusingly similar' analysis will assist rights-holders given that the panelist found the addition of the words "discount", "sunglasses" and "sale" did not distinguish the Domain Name from the OAKLEY trade-mark. Furthermore, the screenshots of the website show the registrant is using the website to advertise numerous varieties of sunglasses for sale which is clearly confusing. 

You can read the full decision here.

Thursday, May 3, 2012

CDRP SUMMARY #187 - Forest Laboratories Canada Inc. v. Netnic Corporation (Complaint dismissed)

The registrant (Netnic Corporation) responded to the Complaint. The Complainant filed a trade-mark application on December 14, 2009. The domain names ( and were registered on October 1, 2011. The panelists found that the Complainant did not establish its rights in the FOREST LABORATORIES mark prior to the date the domain names were registered. The panelists found that a certificate of incorporation of the Complainant, screen shots of the parent company's UK subsidiary, press releases, attendees list, and packaging showing drugs apparently sold in Canada by the subsidiary were insufficient evidence to conclude the FOREST LABORATORIES mark was "used" such that the Complainant had rights in the mark.

Tuesday, May 1, 2012

CDRP SUMMARY #186 - (Complaint dismissed)

The Complainant did not establish its case and the panelist therefore dismissed the Complaint.

The registrant (Jonathan Langue) did not respond to the Complaint. The Complainant filed its trade-mark application on March 9, 2009 based on a previously registered trade-mark in Italy.  The Declaration of Use was filed on August 17, 2011 and the mark registered that same day.  The Domain Name ( was registered on March 13, 2011.  The panelist found that the Complainant cannot rely on this registered mark to establish its case because the Domain Name was registered approximately 5 months earlier.  A quick visit to the ‘’ website shows the Complainant’s  website was created in 2005, but there was no evidence provided in the Complaint as to when the Complainant’s ‘’ became active or whether the mark was in use prior to the declaration of use filing date. This case acts as a reminder of the importance of dates when establishing rights in a mark prior to the registration of a domain name.