Tuesday, February 26, 2013

#224 - cuisinesaction.ca - TRANSFER GRANTED

The Registrant registered the domain name on November 15, 2012. The Complainant, 2757-5168 Quebec Inc., is in the business of designing, constructing, planning and installing kitchens and has used its mark CUISINEACTION on the Internet since January 7, 2004. The Panel found the Domain Name to be confusingly similar with the Complainant’s Mark and registered in bad faith. The panel held that an objective person could confuse the Registrant’s domain with the Complainant’s mark, and the Registrant hoped to capitalize off consumer confusion. The Registrant was using the Domain Name to criticize the Complainant’s business, which he argued provided him with a legitimate interest in the Domain. Although freedom of expression is an important right and is non-commercial, it does not grant the Registrant the right to use a Domain Name in such a manner. Even if the Domain Name consisted of good reviews of the Complainant’s business, it would still cause confusion, and another Domain Name could have been used by the Registrant. Note: I used Google translate to assist in the translation of the decision.

You can read the decision here

#223 - greypower.ca - TRANSFER GRANTED

The Registrant registered the Domain Name on February 1, 2001. The Complainant, Intact Financial Corporation, is Canada’s largest insurance organization, and owns several well-known brands, including Grey Power, and registered its trademark in 1997. The Complainant received no response from the Registrant. The Panelist found that since the Complainant’s trademark was known and well established, an objective bystander would naturally assume the Domain Name was invoking the Complainant’s Mark, and therefore confusingly similar. The Complainant submitted that the Registrant displayed a pattern of registrations in order to prevent a rightful trademark owner from registering their Domain Names, and provided 14 examples of registering the same Domain as previously registered trade-marks, which was accepted by the Panelist as proving the bad faith of the Registrant. 

You can read the decision here

Thursday, February 21, 2013

#222 - chicos.ca - COMPLAINT DISMISSED

The Complainant is Chico's Brands Investments, Inc. and the Registrant is Victoria Jouaneh. The Registrant registered the Domain Name on April 4, 2007, approximately 5 years after Chico's registered its trade-mark. The Registrant argued that the Domain Name was a generic term that she uses to refer to her young kids, and the Domain Name is being used by her for e-mail purposes (and her intent was to create a web site for her family pictures). The Panel found, as was acknowledged by the Registrant, that the Domain Name was confusingly similar to the Complainant's trade-mark. However, the Registrant had a legitimate interest in the Domain Name and there was no finding of bad faith. Since the Domain Name was the term used by the Registrant to identify her children, this proved she had a legitimate interest in the Domain Name. In terms of bad faith, the Panel found that this particular Domain Name was not used for commercial purposes, distinguishing cases of bad faith pursuant to 3.5(d) of the Policy.

You can read the decision here.

Wednesday, February 13, 2013

#221 - arcelormittal.ca - TRANSFER GRANTED

The Complainant is a combination of Luxembourg steel companies Arcelor and Mittal, who merged in 2007 to collectively become the largest producers of steel in the world. The Registrant NETNIC Corporation Protective Registration Services registered the Domain Name on behalf of an anonymous “Registrant”.  The Registrant registered the domain name on June 26, 2006, the day after the merger of Arcelor and Mittal was announced. The Registrant argued that the Complainant had no rights in the name until the official merger in November 2007. However, the panel found that rights in the combined names were transferred immediately to the successor the day the merger was publicized (regardless of the fact that the mark was not in use), and therefore, the Complainant had rights in the name the day before the Domain Name was registered. The Registrant also claimed that it had a legitimate interest in the Domain Name as it was holding it as the nominal power for a beneficial owner. The Panel viewed this argument as a disclaimer of any interest, and the Panel cannot consider whether a purported beneficial owner, who is not a Registrant, has a legitimate interest in a Domain Name. Lastly, a Registrant is required to be the named owner and keep the registration of the Domain Name true, complete and accurate. The Panel found that the Registrant did not do so - in order to conceal the existence of a beneficial owner which it found to be an act of bad faith.

You can read the decision here

Tuesday, February 12, 2013

#220 - whitehouseblackmarket.ca - TRANSFER GRANTED

The Registrant (International Clothiers) did not respond to the Complaint. Chico’s Brand Investments Inc. uses its WHITE HOUSE BLACK MARKET trade-mark in association with its apparel and retail store services in Canada, since at least as early as 2004.  The Domain Name was registered in 2011 by one if its Canadian competitors – International Clothiers. The Registrant did not respond to the Complaint and the panelist therefore accepted the Complainant’s arguments, including the fact that there has never been any prior relationship between the parties justifying the Domain Name’s registration.  The Complainant satisfied the bad-faith test mainly because there was no attempt to respond to any of the assertions made by the Complainant. 

You can read the decision here

Monday, February 11, 2013


The Complainant was Asos Canada Services Limited and the Registrant was Nexon Media Inc. A response was received from the Registrant, who had registered the Domain Name on January 28, 2009, allegedly on behalf of Asos Canada, Inc. The Complainant acquired all right, title and interest in the ASOS mark by way of assignment on July 31, 2012. The Complainant first had to show that the ASOS mark had been used in Canada (as a common law mark), which it did. However, the Complainant failed to satisfy the Canadian Presence Requirements and its Complaint was dismissed, since it could not have registered the Domain Name on January 28, 2009.  It was not a company incorporated in Canada, nor did it have a registered trade-mark.

You can read the decision here.