The Complainant is Intertek Testing Services NA
Ltd. The Registrant is Intertek Oil and Gas and/or Canada Oil & Gas
Recruitment Agency and the disputed domain name is INTERTEKOIL.CA.
The
Complainant established that its registered trademark INTERTEK is a Mark in
which it had rights and that those rights pre-dated the registration of the
domain name.
The Panel found two indications of bad faith: firstly, the
Registrant's web site reproduces verbatim the content of various websites in
the oil and gas industry. Secondly, when counsel for the Complainant sent the
Registrant a cease and desist letter, the solicitor received a response that
threatened to 'trace and kill' the solicitor.
You can read the decision here.
Friday, November 22, 2013
#243 - studentuniverse.ca - TRANSFER GRANTED
The Panel found that the Complainant has rights
in the STUDENTUNIVERSE mark based on use in Canada since May 2000.
The Complainant operates the studentuniverse.com web site. The Registrant is a competing travel agent operating its site at s-trip.com (where the studentuniverse.ca. web site resolves) The Registrant did not respond and attempted to file materials and requested an extension of time to file same, which was denied.
The Panel held that the Domain Name was registered in bad faith because the parties were competitors and offered the same services to students.
You can read the decision here.
The Complainant operates the studentuniverse.com web site. The Registrant is a competing travel agent operating its site at s-trip.com (where the studentuniverse.ca. web site resolves) The Registrant did not respond and attempted to file materials and requested an extension of time to file same, which was denied.
The Panel held that the Domain Name was registered in bad faith because the parties were competitors and offered the same services to students.
You can read the decision here.
Tuesday, November 19, 2013
#242 - arpe.ca - TRANSFER GRANTED
The
Complainant is Electronic Products Recycling Association, a non-profit
corporation. The Registrant is Jean-Francois Rivard, an individual. The
disputed domain name is arpe.ca.
You can read the decision here.
The
Panel found that the Complainant has rights in the unregistered mark based on a
press release submitted by the Complainant dated July 19, 2012, which showed
use of the ARPE & Design mark and the trade name ARPE-Quebec.
The
Panel found that the Registrant acted in bad faith and had registered the Domain
Name primarily for the purpose of disrupting the business of the Complainant.
The disputed Domain Name resolved to a web site containing accusations against
the Complainant and links to a pornographic website.
However,
the Panel rejected the Complainant’s argument that the Complainant was a
"competitor" of the Registrant in the sense that they were “competing
for online traffic.” The Panel found that such an interpretation would render redundant
the requirement that the Complainant be a competitor of the Registrant since
all web sites compete for traffic.
Nevertheless,
the Panel found that the Complainant met its initial burden of providing some evidence
that the Registrant had no legitimate interest in the Domain Name and since the
Registrant had not filed a reply to the Complaint, the Panel was unable to find
that the Registrant had a legitimate interest in the domain and ordered the
transfer.
You can read the decision here.
Tuesday, November 5, 2013
#214-1 - mtvjerseyshore.ca - TRANSFER GRANTED
The Complainants established their case and
the panelist therefore directed the transfer of mtvjerseyshore.ca to the
Complainants.
The registrant (W. Ryan Sutherland) did not
respond to the Complaint. Viacom International Inc. is a leading global media
company whose brands include MTV and its now off-the-air TV show Jersey Shore. One of the MTV trade-marks was registered as
early as 1987 and the unregistered JERSEY SHORE trade-mark was used in Canada
since at least as early as December 2009. The Registrant registered the Domain
Name (mtvjerseyshore.ca) in October, 2011. The Complainant delivered a cease
and desist letter to the registrant, which was ignored. The panel found that the Domain Name was registered
in bad faith because it was primarily registered to disrupt the Complainant’s
business – especially in light of the advertisements, photographs and blog
entries related to the Jersey
Shore television show. Although the Registrant did not respond to this Complaint,
he will not likely be doing any ‘fist-pumping’ following his review of this
decision. You can read the decision here.
Thursday, October 24, 2013
#241 - careymontreal.ca - TRANSFER GRANTED
The Domain Name in issue in this proceeding is <careymontreal.ca>, registered on October 14, 2012. The Complainant is a US limousine company, which operates under its CAREY trademark which was registered in 1994.
The Panel found that the Registrant registered the domain name in bad faith since the disputed domain name was an almost exact duplication of the Complainant's web site but was designed to compete with the Complainant. The Panel further found that the Registrant had a pattern of registering domain names using the CAREY trademark despite previously issued court orders and UDRP proceedings.
The panel found that the Registrant had no legitimate interest in the mark since, apart from the litigation over the domain, there has never been any relationship between the Complainant and the Registrant, and the Registrant has never been licensed, or otherwise authorized to register or use, the CAREY trade-mark in any manner whatsoever.
You can read the decision here.
The Panel found that the Registrant registered the domain name in bad faith since the disputed domain name was an almost exact duplication of the Complainant's web site but was designed to compete with the Complainant. The Panel further found that the Registrant had a pattern of registering domain names using the CAREY trademark despite previously issued court orders and UDRP proceedings.
The panel found that the Registrant had no legitimate interest in the mark since, apart from the litigation over the domain, there has never been any relationship between the Complainant and the Registrant, and the Registrant has never been licensed, or otherwise authorized to register or use, the CAREY trade-mark in any manner whatsoever.
You can read the decision here.
Friday, October 18, 2013
#240 - cana-med.ca - TRANSFER GRANTED
The
Complainant produces medical marihuana under the name CANNIMED, a trade-mark
registered on August 6, 2004 that has since become closely associated with the
complainant, the sole supplier of medical marijuana in Canada. “Cana-med.ca”
was registered on December 20, 2010. Since approximately July, 2012, the Domain Name
had been used to direct visitors to a website which advertises itself as a
seller of medical marijuana.
You can read the decision here.
The
complainant alleged that the Domain Name was confusingly similar to its mark.
The panel noted that despite differences in spellings, Domain Names can be found to be
confusingly . In this case, since the Domain Name
both looked and sounded similar, it was confusing.
The
Panel found that, since visitors to the Domain Name were referred to a web
page where medical marihuana was offered for sale, a reasonable inference could
be made that the Registrant registered the domain name to direct internet users
to the Registrant’s website by creating a likelihood of confusion for
commercial gain.
The
Panel further found that, by using the Domain Name to sell products which are the
same as those being sold by the Complainant in association with its
trade-mark, the Registrant demonstrated a lack of good faith.
You can read the decision here.
Friday, October 4, 2013
#239 - americangirl.ca ROUND II - TRANSFER GRANTED
The Complainant (American Girl, LLC - a wholly owned subsidiary of Mattel, Inc.) has operated the website americangirl.com since 1997 and owned the
trade-mark AMERICAN GIRL since 1986. The disputed website, registered in 2004,
led to a pay per click site with sponsored links to competitors of the
Complainant.
Previously, the Complainant filed a CDRP Complaint against
this same Registrant but the panelist in that case found that the Complainant
had failed to demonstrate that the Registrant had no legitimate interest in the
domain. The Registrant then brought this second complaint. The Panel held that
the Complainant could bring a complaint regarding the same domain name because
the claim was not brought to harass the Registrant and because the complainant
provided substantial new evidence concerning the Registrant's activities.
The Panel found that the Complainant has rights in the Mark
which predate the registration of the Domain. The Panel further found that the
Complainant had no legitimate interest in the Mark – recently resolving the
Domain Name to a Facebook account was a transparent attempt to legitimize the
Domain Name. Regarding the bad faith requirement, the Panel noted that the
Domain Name initially had a notice on the website offering it for sale, which the
panel found met the bad faith requirement under section 3.5(a). The Panel
also found it was likely that the Registrant chose the Domain Name based on the
confusion it would cause the public in an attempt profit financially.
You can read the decision here.
Thursday, September 26, 2013
#238 - benchclothing.ca - TRANSFER GRANTED
The disputed Domain Name is benchlothing.ca, which was registered on December 9, 2011. The complainant is Americana International (represented by Kestenberg Siegal Lipkus LLP), the owner of the immensely popular BENCH clothing brand, which is sold in retail outlets and across Canada and the world. The Registrant did not respond to the complaint.
The Panelist found that the Domain Name was confusingly similar to the complainant’s BENCH trade-mark. Rather than dispel confusion, the addition of the word “clothing” enhanced any confusion by capturing not only the trade-mark itself but also the wares in association with the trade-mark.
The Complainant submitted that the Domain Name was used by the Registrant to sell counterfeit products and this supported a finding of bad faith. The Panelist agreed. Furthermore, the Registrant, "Bench Clothing Store Inc.” had no relationship with the complainant and was not even a registered business name. The Panelist therefore held that the Registrant had no legitimate interest in the Domain Name and ordered the transfer the Complainant.
You can read the decision here.
Tuesday, September 10, 2013
#237 - urbanlegal.ca - TRANSFER GRANTED
The Complainant is Urban Legal Recruitment Limited, an Alberta corporation. The Registrant is Craig Nadeau of Calgary, Alberta.
The panel found that based on the additional evidence (Urban Legal invoices) submitted as well as the registered trademark URBAN LEGAL, that the Complainant had rights in the mark and the domain name was confusingly similar. Regarding the requirement of registration in bad faith, the panel found that the Registrant registered the domain to direct traffic to the Complainant's former employer and to prevent the Complainant from using the Domain Name. The panel found that the requirement for bad faith had been met and ordered the transfer.
You can read the decision here.
Wednesday, August 21, 2013
#236 - empiretheatres.ca - TRANSFER GRANTED
The complainant is Empire Theatres Limited of New Glasgow,
NS. The registrant is Michael Morgan of 15 Lorna Court, Elmsdale, NS. The
disputed domain name is <empiretheatres.ca>
The registrant did not file a response. The panel found that the Complainant owned the EMPIRE
THEATRES trade-mark and further found that the Domain Name in question, which
was identical to the Mark, was confusingly similar. The panel also held that
the Registrant had no legitimate interest in the Domain Name because the
respondent’s use of the Mark long predated registration of the subject Domain Name
and the Registrant was using the Mark to attract customers and re-direct them
to competing products. Finally, the panel found the registrant had registered
the Domain Name in bad faith since it was aware of the renown of the Mark and
registered the Domain Name to attract and mislead internet users.
You can read the decision here.
Wednesday, August 7, 2013
#235 - designfirst.ca - COMPLAINT DISMISSED
The
Complainant is Design First Kitchen & Bath Interiors Inc. and the
Registrant is Stone Beach Design Inc, both of Ottawa, Ontario.
The
complainant has used DESIGN FIRST as an unregistered mark since its founding in
1986 but only registered DESIGN FIRST as a trademark on November 5, 2012. The
Registrant has been using the business name “Design First Creation and
Development Inc.” since March 2001 and registered the domain name DESIGNFIRST.CA on April 5, 2001.
The
registrant conceded that the domain name is confusingly similar to the
complainant’s mark; however, the panel found that the registration was not made
in bad faith since the two businesses are not competitors and service different
markets. Furthermore, there was no evidence of any link between the services
offered by the parties and/or actual confusion caused by the similarity of the Domain
Name to the complainant’s mark.
Furthermore,
the panel concluded that the complainant had failed to show that the Registrant
did not have a legitimate interest in the domain. The panel found that the
Domain Name was registered and advertised to the Registrant’s customers and
therefore no link to the Complainant in that regard.
Finally,
the panel found that the Complaint did not bring the complaint in good faith
and instead commenced the complaint for the purpose of, unfairly and without
colour of right, cancelling, or obtaining a transfer of the domain. The
Complainant conceded that it registered the design-1st.ca trade-mark
to essentially trench on the Registrant’s rights. The panel therefore awarded the Registrant
$5000 in costs—the maximum allowable under the dispute resolution policy.
You can read the decision here.
Thursday, July 18, 2013
#234 - alamocars.ca, nationalrentalcars.ca, et al.- TRANSFER GRANTED
The Complainant established its case and the Panel
transferred the domain names to the Complainant.
The Complainant is Vanguard Trademark Holdings USA, LLC, the
owner of the NATIONAL and ALAMO trade-marks, used in Canada in association with
automobile renting services. The Complainant has used the NATIONAL trade-mark
in Canada since 1950 and the ALAMO trade-mark in Canada since 1998. The
Registrant registered the disputed Domain Names on February 15, 2012 and did
not respond to this Complaint. Of note: the panelist found that the Domain Names
were registered in bad faith partly because the web sites were disrupting the
business of the Complainant - a section of the web sites were dedicated
to links to the Complainant’s competitors.
You can read the decision here.
Monday, July 15, 2013
#233 - oakleysunglassesforsale.ca - TRANSFER GRANTED
Kestenberg Siegal Lipkus LLP represented Oakley Inc. and was successful in transferring the Domain Names (OAKLEYSUNGLASSESFORSALE.CA, OAKLEYSUNGLASSESSTORE.CA, OAKLEYSUNGLASSESCHEAP.CA) to their rightful owner, Oakley Inc.
The Complainant is Oakley Inc., a very well-known manufacturer of sunglasses and other apparel. Oakley's uses a large portfolio of trademarks in Canada and spends significant monies promoting their brand through various advertising mediums. The Registrant in China registered the domain names on June 5, 2012 and the Complainant filed its complaint on May 22, 2013. The Registrant did not respond. Of particular interest in this Complaint was the panelist's helpful comments regarding the confusingly similar domains/web sites that sell counterfeit merchandise.
You can read the full decision here.
The Complainant is Oakley Inc., a very well-known manufacturer of sunglasses and other apparel. Oakley's uses a large portfolio of trademarks in Canada and spends significant monies promoting their brand through various advertising mediums. The Registrant in China registered the domain names on June 5, 2012 and the Complainant filed its complaint on May 22, 2013. The Registrant did not respond. Of particular interest in this Complaint was the panelist's helpful comments regarding the confusingly similar domains/web sites that sell counterfeit merchandise.
You can read the full decision here.
Thursday, July 4, 2013
#232 - fraser.ca - COMPLAINT DISMISSED
The Complainant is William KO of Burnaby, British Columbia and the Registrant is Warren Glenn of Toronto, Ontario. The Registrant did not file a response to the Complaint that was made on May 1, 2013. The Complainant did not assert any trade-mark rights in and to the Domain Name. The Complaint as drafted stated that the Registrant’s Domain Name expired and the Complainant alleges it subsequently acquired the rights to the Domain when it “paid for and registered” the Domain Name. Adding to the confusion was the fact that the Registrant likely renewed its Domain Name during the grace-period that followed the expiry of the Domain. The Panelist rightly held that this case was not properly suited for the policy as the Complaint was not an instance of cyber-squatting involving the misappropriation of trade-mark rights.
You can read the decision here.
You can read the decision here.
Monday, June 17, 2013
#230 - clevelandcyclewerks.ca - COMPLAINT DISMISSED WITH COSTS
The Complainant did not establish its case and the panelist
therefore dismissed the clevelandcyclewerks.ca Complaint.
The Registrant (MC Motorsports Canada Ltd.) responded to the
Complaint. The Complainant argued it became the exclusive distributor of CLEVELAND
CYCLEWERKS branded motorcycles, parts and accessories in April 2011 (culminated
by a License Agreement dated April 1, 2012).
However, the Registrant argued it had a prior existing relationship with
the licensor of CLEVELAND CYCLEWERKS branded motorcycles, parts and accessories,
and provided e-mails from the CLEVELAND CYCLEWERKS Licensor authorizing the registration
of the Domain Name and confirmation of its ownership thereof. The Panel did not find the Registrant
registered the Domain Name in bad faith, especially in light of the fact that
the text on the web site explicitly states the Registrant is no longer
associated with the Licensor. Of note: The Registrant included an application requesting
that the Panel exercise their authority and grant costs. The Registrant argued that the dispute was a
business dispute rather than cyber-squatting, the Complainant misrepresented
the relationship between the parties, and the Complainants recital of facts were
wholly inaccurate, amongst other things.
The Panel agreed with the Registrant and ordered $5,000.00 in
costs.
You can read the decision here.
Wednesday, June 5, 2013
#231 - buickcertifiedservice.ca, chevroletcertifiedservice.ca and cadillaccertifiedservice.ca - TRANSFER GRANTED
The Complainant established its case and the Panelist
therefore directed the transfer of buickcertifiedservice.ca, chevroletcertifiedservice.ca
and cadillaccertifiedservice.ca to the Complainant.
The registrant (DS1 Design) did not respond to the
Complaint. General Motors LLC is a well-known automotive manufacturing
company. The Complainant owns hundreds of BUICK, CHEVROLET and CADILLAC trade-marks. The earliest of the BUICK, CHEVROLET and
CADILLAC trade-marks were registered in Canada in 1926, 1941 and 1926, respectively. The Domain Names were confusingly similar
because the addition of the words ‘certified’ and ‘service’ are likely to be
associated with motor vehicles and do not distinguish the Domain Names from the
Complainant’s trade-marks. The Panelist found that the multiple Domain Names
were registered in bad faith because the three registrations constituted a pattern
of abusive registrations.
You can read the decision here. http://cira.ca/assets/Documents/Legal/Dispute/2013/00231-buickcertifiedservice-ca.pdf
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