The Complainant is Ontario’s largest independent deck design, supplier and builder with showrooms in Toronto, Oakville, Oshawa and Milton. The Complainant’s trade name is The Deck Store Inc., has been using thedeckstore.ca as its web site, and asserts common law trade-mark rights in THE DECK STORE. The Complainant owned the disputed Domain Name in 2008, but failed to renew it. The Domain Name was registered on May 13, 2010 by Deck Masters of Canada, who subsequently sold the Domain Name to The Deck Store Ltd. (in June, 2013). Of note: the Registrant opened its store THE DECK STORE in Edmonton in 2010.
The Panel found that the Complainant failed to establish that its trade-mark was distinctive so as to distinguish its wares/services from other competitors in the business as at the date of the registration of the Domain Name, and relies on the CIPO trade-mark examiner’s report that the Complainant’s THE DECK STORE trade-mark application was clearly descriptive or deceptively misdescriptive of its services. The Panel addressed other issues, including a refusal to award costs for reverse domain name hijacking and finding leniency on the Complainant for imputing bad faith assumed on the part of its nemesis, Deck Masters of Canada (see thedeckstoreinc.ca).
You can read the decision here.