Tuesday, August 28, 2012

#196 - mobil1lubeexpress.ca - Transfer Granted

The Complainant established its case and the panelist therefore directed the transfer of mobil1lubeexpress.ca to the Complainant.

The registrant (Wally Akhras) responded to the Complaint. Exxon Mobile Corporation (“Mobil 1”) uses their trade-marks in association with numerous petroleum products and related services, including lubricating oils.  The MOBIL trade-mark was used in Canada as early as 1934.  The MOBIL 1 LUBE EXPRESS mark was publicized in Canada in 2006.  There were 2 significant interpretations of the Policy by the panel. First – despite the MOBIL 1 LUBE EXPRESS trade-mark registration occurring after the Domain Name was registered, the Panel accepted the argument that the definition of Rights is no longer restrictive - and “common law” rights ought to be included. The panel also accepted Exxon’s arguments that the Registrant’s conduct after the registration can be taken into account when assessing bad faith as it relates to the registrant’s intention to attract, for commercial gain, internet users to the Registrant’s website (paragraph 3.5(d) of the Policy). This case is worth reading as there was a previous relationship between the parties that was terminated and an apparent offer to sell the Domain Name to Exxon for $1,000,000.00 that factored into the Panel’s decision.

Thursday, August 16, 2012

#195 - albertafoundationandconcretelifting.ca - Complaint dismissed

The Complainant failed to establish its case and the panelist therefore declined to order the transfer of AlbertaFoundationAndConcreteLifing.ca and AlbertaFoundationConcreteLifting.ca to the Complainant.

The Registrant (Concrete Specialists Ltd.) did not respond to the Complaint. The Complainant, David Chambers, is the President/sole shareholder of Alberta Foundation and Concrete Lifting Ltd. The Complainant is not the owner of any registered trade-mark and therefore must prove use of its Mark prior to August 23, 2010 (date of registration of the Domain Names).  There was no evidence that David Chambers used the Mark and the panelist therefore rightfully dismissed the Complaint.  The panelist helpfully suggested that the Complainant’s corporation ought to file the Complaint so that a future panelist could appropriately determine whether the Mark was in use. 

Read the decision here

Thursday, August 9, 2012

#194 - petdepot.ca - Complaint dismissed

The Complainant did not establish its case and the panelist therefore dismissed the petdepot.ca complaint.

The registrant (Anna Sparkles) did not respond to the Complaint. The Complainant registered its PET DEPOT trade-mark in Canada in 2009. The Domain Name was registered on May 27, 2004.  The Panellist commented that there was no evidence submitted to support the Complainant`s position that it used the PET DEPOT trade-mark in Canada prior to May 27, 2004 (but for bald allegations in the complaint, which were given little or no weight). The Complainant conceded that the Registrant had used the petdepot.ca Domain Name, conducted business and made sales between 2004 and 2010. The Complainant therefore failed to register (or even file) its trade-mark prior to the Registrant`s potentially legitimate and rightful use of the petdepot.ca Domain Name.

You can read the decision here