Wednesday, January 30, 2013

#218 - bagbalm.ca - TRANSFER GRANTED


The Complainant established its case and the Panelists transferred the Domain Name to the Complainant.

The Complainant, Dr. A.C. Daniels Co. Ltd., has owned the BAG BALM trademark in Canada since 1998 and has used it since at least 1930. The product is a medicinal ointment used to heal wounds on livestock. The Registrant registered the Domain Name in 2003, and distributes the Complainant’s ointment using the BAG BALM trade-mark in Canada, but is not affiliated in any way with the Complainant. The Panel found that the Registrant registered the Domain Name in bad faith because the web site is focused solely on the Complainant’s ointment and sells that product to consumers allowing the Registrant to reap commercial and financial benefits off of the Complainant’s trade-mark. Finally, the Panel found that the Registrant’s disclaimer that it is in no way affiliated with the Complainant was not enough to avoid a finding that the Registrant has no legitimate interest in the Domain Name.  


You can read the decision here.

#217 - grilladesstk.ca (and others) - COMPLAINT DISMISSED


The Complainant could not satisfy the bad faith and legitimate interest criteria and the Complaint was therefore dismissed.

The Complainant is One Group LLC, which owns and operates a popular chain of restaurants using the STK trade-mark in the USA.  They also own the STK trade-mark in Canada.   The Registrant is Gouverneur Inc. and they operate hotels in Quebec.  The Registrant initiated opposition proceedings as it relates to the Complainant’s STK registered trade-mark, which is still awaiting a decision.   The Registrant argues that the Complainant is not using the trade-mark in Canada, that it has taken steps to register its STK mark in Canada (application is based on proposed use and is currently pending) and that it therefore has a legitimate interest in the STK trade-mark.  The Panel found that the Registrant is taking common, appropriate and reasonable steps, and this is certainly not one of the cases where a Registrant is preying on the trade-mark of others. 

You can read the decision here

Friday, January 18, 2013

#216 - americangirl.ca - COMPLAINT DISMISSED


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

The Registrant (“G.L.P.”/not disclosed) did not respond to the Complaint. The Complainant registered its AMERICAN GIRL trade-mark in 2000, in association with dolls and toys.  The Domain Name was registered on October 18, 2004.  The Registrant was not known to the Complainant at the time this Complaint was submitted. Despite the Panelist’s invitation to submit additional evidence once it learned the identity of the Registrant, it elected not to make any further submissions, to its detriment. Although the Registrant operated a pay-per-click web site, the Complainant did not provide any evidence that the Registrant had no legitimate interest in and to the Domain Name. Instead, the Complainant made assertions that closely followed the criteria listed in the Policy. 

You can read the decision here

Tuesday, January 15, 2013

#215 - HAVAIANAS.CA - TRANSFER GRANTED



The Complainant established its case and the Panelist transferred the domain name to the Complainant.

The Complainant is Alpargatas S.A.  The Registrant is Hexonet Services Inc. The Complainant uses the HAVAIANAS trade-mark in association with its very popular sandals, and has enjoyed success around the world. The Complainant registered its trade-mark in Canada in 1999 and then in July of 2012, the Registrant registered the Domain Name. The Registrant did not respond to the Complaint. The Panelist found that the Domain Name was registered in bad faith because the Registrant had a continuous pattern of registering well known and famous trade-marks or variations thereof as Domain Dames in order to prevent the person with rights in the trade-mark from registering it themselves. 

You can read the decision here

#214 - ebeam.ca - COMPLAINT DISMISSED



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

The Registrant (Paterasp Nirumvala) did not respond to the Complaint. The Complainant owns the EBEAM trade-mark in association with its innovative products that transform flat surfaces into interactive and collaborative workspaces.    According to the Complainant, the Domain Name was registered by the Complainant’s former authorized distributor following a breakdown in the relationship whereby the Registrant acquired the Domain Name and offered to sell it to the Complainant for $250,000.00.  The panelist held that mere allegations as to the registration will not suffice, and the allegations must be proved by way of evidence, which was not done in this case.  The decision does not provide any details about the evidence required, nor whether the Complainant provided, by way of example, the Distributorship Agreement, a WHOIS print-out of the domain name registration, etc.

#213 - enmotion.ca - TRANSFER GRANTED



The Complainant established its case and the Panelist transferred the domain name to the Complainant.

The Complainant is Georgia-Pacific Consumer Products LP and known around the world for its manufacturing of tissues, towels, napkins, dispensers and other related products. The Registrant registered the Domain Name in October, 2010 (the ENMOTION trade-mark was registered by the Complainant as early as November 12, 2004).  The Registrant did not provide a response to the Complaint.  The fact that the Registrant did not rebut the Complainant at all was fatal to any claim of legitimate interest. The Panelists also held that the Domain Name was registered in bad faith because the Registrant diverted traffic from legitimate websites to the Registrant’s Domain Name, creating advertising revenue from third parties.

Monday, January 14, 2013

#212 - mymagna.ca - TRANSFER GRANTED


Magna International Inc. is a Canadian company involved in the global automotive supply industry. The trademark was registered on June 21, 1985; however, the trademark had been extensively used and very well-known since 1968. The Registrant registered the Domain Name on June 26, 2011. The web site displayed a banner of an automobile and was populated with pay-per-click advertisements that linked to websites belonging to competitors of the Complainant. The Registrant contacted the Complainant and offered to sell the Domain Name. The offer was rejected, but the Registrant just came back with another offer to sell the domain at a lesser price. The Panel concluded that the Domain Name was confusingly similar as the Registrant just added the prefix "my" to a famous name and this does not detract from the identical reproduction of the trade-mark that otherwise exists. An objective bystander would naturally be confused.

#211 - legostore.ca - TRANSFER GRANTED



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

The Registrant (Emma A. Lehmann) did not respond to the Complaint. LEGO Juris A/S (“LEGO”) in an extremely well-known maker of toy building block sets.  The LEGO trade-mark was registered in Canada in 1957.  The Domain Name was registered on July 27, 2012 and the Complainant therefore served a cease and desist letter.  After following-up, the Registrant requested a payment in the amount of $2,500.00 plus escrow fees, opening the door for the Complainant to satisfy that the Domain Name was registered in bad faith (paragraph 3.5 (a)).  The panelist noted that more facts would be necessary as it relates to the website and its funding model, before finding bad faith under 3.5 (d) (intentionally attempting to attract user for commercial gain).