Friday, November 22, 2013

#244 - intertekoil.ca - TRANSFER GRANTED

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.

#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.

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.

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.

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.

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

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.

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.