Wednesday, December 9, 2015

behr.ca - TRANSFER GRANTED



The Complainant, Behr Process Corporation, is an immensely popular paint, stain and varnish manufacturer. The Registrant’s contact information is privacy protected, and did not respond to the Complaint. The Complainant first began using its BEHR trademark in Canada in 1980 and the Domain Name was first registered on January 9, 2008.

The Domain Name, behr.ca, is currently being used as a pay-per-click web site, including links to Behr Paint and Behr Paint Colours, amongst others.  The Panel found that the Domain Name was registered in bad faith because the Registrant is reaping a financial benefit by way of referral fees.

You can read the decision here.

Thursday, October 1, 2015

#303 - fluourcorporation.ca - TRANSFER GRANTED

The Complainant, Fluor Corporation is a publicly traded construction company employing 40,000 people around the world. The Registrant, an unidentified individual, did not respond to the complaint. The Complainant first registered its mark FLUOR in Canada in 1973.  The Complainant was previously successful in ordering the transfer of a similar Domain Name on May 1, 2015.

The pay-per-click site was parked by GoDaddy therefore the Panel found that there was no evidence that the revenue generated was payable to the Registrant.  Furthermore, the "e-mail" document provided by the Complaint purporting a "fraudulent job posting" also did not appear to have any direct link to the Complainant, and raised additional questions such as what would happen when a recipient would communicate with the person that e-mailed them. However, the Panel found bad faith based on the Complainant's allegations taken together, and because the Registrant failed to respond. 

You can read the decision here.

Tuesday, September 29, 2015

#302 - tous.ca - COMPLAINT DISMISSED

The Complainant is a Spanish company which has owned the TOUS trademark since 1920. It sold its products in Canada prior to the 2006 registration of the domain, which was sufficient to establish prior trademark rights. 

Despite the Registrant previously registering domain names in bad faith (in other successful Complaints), and despite the Domain Name resolving to a pay-per-click website, the Panel found that TOUS, which means 'all' in French, was too common a word to grant one party exclusive rights to its use. The Panel therefore refused to find that the Domain Name was registered in bad faith.

You can read the decision here.

Thursday, September 24, 2015

#301 - ubreakifix.ca - TRANSFER GRANTED

The Complaint operates 5 stores in Canada using the UBREAKIFIX trademark and provided evidence of use that pre-dates the 2014 registration of the disputed domain.


The Registrant argued that the Domain Name was generic as it relates to fixing damaged products and that he had no intention of competing with the Complaint.  However, the Complaint submitted that the website was visually similar and had taken stock images from the Complainant's website. The Panel found that the website was designed to create confusion as to the source of the website for commercial gain, which could support a finding of bad faith (3.5(c)).


You can read the decision here.

Tuesday, September 22, 2015

#300 - wordpress.ca - TRANSFER GRANTED

While the disputed Domain Name was registered prior to the Complainant's trademark, the Complainant had been actively using the trademark prior to its registration. Therefore, the panel found that it had rights in the trademark prior to registration of the Domain Name.


The Domain Name resolved to a "website builder" that the Panel found competed with the complainant's services. This competition was sufficient to establish bad faith.


You can read the decision here.

#299 - papjohns.ca - TRANSFER GRANTED

The Complainant had rights in the trademark dating from the year 2000.


The Domain Name was confusingly similar to the trademark and resolved to a pay per click website, which was sufficient to establish bad faith.


You can read the decision here.

#298 - scoutscanada.ca - TRANSFER GRANTED

In this second CDRP complaint requesting a transfer of the Domain Name, the Complainant provided evidence that it registered its trademark in 1993 giving it rights in the mark prior to registration of the disputed domain.


The Domain Name resolved to a website containing non-commercial content critical of the complainant. While the panel found that this was not a typical example of bad faith, the Registrant created a misleading impression by utilizing a domain name that would lead the public to think that this website was operated by the Complainant, which was sufficient to ground a finding of bad faith.

You can read the decision here.

#297 - cloudflare.ca - COMPLAINT DISMISSED


The Domain Name was registered on November 2, 2012. The Complainant alleged that it had rights in the mark and that the date of first use in Canada was April 21, 2010; however, the trademark application itself was not filed until October 30, 2013. On the US trademark registrations, the date of first use in the United States was listed as September 27, 2010, which is later than the alleged Canadian date of first use. The panel found that it was unlikely that use would have commenced earlier in Canada than the US, the Complainant's country of residence.


The Panel thus found that there was insufficient evidence of rights in the trademark prior to registration of the Domain Name and dismissed the Complaint.


Of note: although bad faith was not determined, the Registrant at one point offered to sell the Domain Name for $9,000.00.


You can read the decision here.

Wednesday, September 2, 2015

#296 - goldennuggetcasino.ca - TRANSFER GRANTED


The Complainant operates the Golden Nugget casino in Las Vegas, Nevada, which commenced its operations in 1946. It operates online through its website at www.goldennugget.com. The Golden Nugget trademark was register in Canada in 1998. The Domain Name was registered in 2011.

 

Being identical to the trademark (with the addition of the term "casino," which is the service provided by the Complainant), the Panel found the Domain Name to be confusingly similar. The Domain Name resolves to a website that uses the trademark to solicit gambling business, clear evidence of bad faith.




You can read the decision here.

#295 - albertahonda.ca - TRANSFER GRANTED

The Complainant had conducted business as a Honda dealership under the trade name "Alberta Honda" for over 20 years, and operated albertahonda.com since 1998.
 
The Panel found that the trade name constituted a mark under the policy. The Domain Name resolves to the website of another dealership, Sherwood Park Chev. The Registrant argued that his "analytics" showed that no referral traffic actually passed to Sherwood Park Chev's website.  However, the fact that the Domain Name resolved to a competitor indicated an intention to use to the competitor's trade name in bad faith. The responding argument that the dealer once intended to sell used vehicles, including Honda-branded vehicles failed.

You can read the decision here.

Friday, August 28, 2015

#294 - dellbusiness.ca and delldeals.ca - TRANSFER GRANTED


The Domain Name, dellbusiness.ca was registered on November 21, 2012, and updated, January 5, 2015. The Domain Name delldeals.ca, was registered on November 14, 2012, and updated December 7, 2014. The complainant is the owner of a number of DELL trademarks, first registered in 1989. The complainant owns dell.com dell.ca and dellrefurbished.ca among others.

 

The panel found that the Domain Names were confusingly similar to the trademark and, in accordance with numerous CIRA und WIPO case the inclusion of additional descriptive words or letters did not prevent the domain from being confusingly similar. The Registrant's procedural objections were meritless, including complaining that Dell's representative was based in the UK, the Complaint had not been served properly and DELL does not own a trademark for "operating a website".

 

The panel found that bad faith was evidenced by a pattern of registering infringing domain names, resolving the domains to pay per click websites and listing the domains for sale at domainnamesales.com.


You can read the decision here.

#289 - sensormatic.ca - TRANSFER GRANTED

Complainant is an affiliate of Tyco International Plc, which provides fire, security and surveillance services. The Complainant obtained two trade-mark registrations in Canada for the word “SENSORMATIC”, the earliest having been registered March 5, 1974.
 
The Domain Name was registered on August 9, 2013, and resolves to a website www.jeanmachine.com where the Registrant is employed as an operations manager. The Complainant and Registrant entered settlement dialogue, and the Registrant initially agreed to transfer the domain to the Complainant if the Complainant was willing to cover all of the Registrant’s costs. The matter did not settle.  The Registrant did not respond to the Complaint.
 
The Panel found that the domain was clearly confusingly similar to the mark. Furthermore, the Registrant had a pattern of registering domains identical to the trademarks of others, which allowed the panel to infer bad faith.

You can read the decision here.

#290 - starbeamsystems.ca - TRANSFERRED ON CONSENT

The Domain was transferred to the Complainant with the consent of the Registrant who offered to transfer the Domain Name as a "gesture of goodwill".


You can read the decision here.

#291 - thefundingportal.ca - TRANSFER GRANTED


The Complainant is the owner in Canada of common law trade-mark rights in the mark “THE FUNDING PORTAL,” which precede the registration date of the Domain. The Domain Name was identical to the trademark.

 

While the Complainant did not produce any evidence that the Registrant engaged in a pattern of registering domain names, they did prove that the Registrant offered to sell the domain for $10,000. The Panel found that the offer exceeded the Registrant's actual costs in registering the Domain Name, evidencing bad faith.

You can read the decision here.

#292 - glashuette-original.ca - TRANSFER GRANTED


The Complainant is a designer, manufacturer, seller and retailer of luxury wrist watches.

The Domain Name resolved to a pay-per-click website featuring sponsored links to competitors of the Complainant. When contacted by the Complainant, the Respondent initially offered to sell the domain for $6000.00, but later reduced the price to $1600. The Panel found that the offer evidenced “classic cybersquatting” and constituted bad faith.

You can read the decision here.

#293 - ZEVIA.ca - transfer granted

Zevia has produced beverages since 2007 in the US, Canada and online through its website. It operates under its ZEVIA trademark which was registered in the United States on October 23, 2007. Its business expanded into Canada and it filed an application with the CIPO to register the ZEVIA trademark in Canada 2008. Three months later the disputed domain was registered, although the Canadian trademark was not registered until 2010.

The disputed domain was inactive but the panel found that if it were to become active it would confuse the public. The Panel found that, given the very distinctive trade mark at issue, it would be “difficult to conceive of” a legitimate use of the domain. The Registrant did not respond to the complaint. Furthermore, the Registrant had engaged in a pattern of registering domain names of popular trademarks.

You can read the decision here.

Thursday, July 16, 2015

#287 - rfrk.ca, realffoodforkids.ca and realfoodlunchclub.ca - TRANSFER GRANTED


Complainant in this proceeding is Real Food For Real Kids Inc., The Registrant is Boaden Catering Ltd., the Complainant’s competitor, although it did not respond. The Domain Names were registered in 2014, however, the Complainant started doing business using the mark "Real Food For Real Kids" on May 10, 2004. The complaint is also uses its unregistered trademarks, the acronym "RFRK" and its sub-brand "Real Food Lunch Club.”


The Registrant operates a business named "Organic Kids Catering" which is in competition with the Complainant's business in the Greater Toronto Area. The Domain Names either redirected their visitors to the Registrant's competing business, and one of the Domains was operating as a pay-per-click advertising page. Previously, a UDRP Panel found that the Registrant was registered <realfoodforrealkidss.com > in bad faith after the Registrant asked for $42,000.00 to sell the domain to the Complainant.


The Panel found that the Domain Names were confusingly similar, although the question was more complex in the case of the domain name <realffoodforkids.ca > because the second "real" from the mark was not present in the Domain Name. However, because the applicable test is based on a first impression and imperfect recollection, the Panel found it is reasonable to believe someone would confuse "real food for kids" with "real food for real kids".


Given that the Registrant was clearly trading off on the Complainant's trademarks in order to make a financial gain and attempting to disrupt the Complaint’s business, it was acting in bad faith. 


You can read the decision here.

Friday, July 3, 2015

#286 - riu.ca - TRANSFER GRANTED


NOTE: Google Translate was used to translate the French-language decision.

 

The Complainant is RIU Hotels, S.A., a very well-known worldwide hotel chain (visited by Canadians during our long and cold winters).  The Complainant owns the riu.com domain name. The Registrant is Stacy Lee, affiliated with Travel Last Minute Inc., and she registered the Domain Name in July, 2004. Despite being granted an extension of time, the Registrant did not respond/

 

The Panel noted that the RIU domain name is identical to the Complainant’s trademark, and some of the images on the Disputed Domain Name were identical to those found on the Complainant’s.  Further, there was no explanation as to why Stacy Lee chose the RIU trademark in its entirety when she registered the Domain Name – likely to bring consumer’s to her travel agency, LAST MINUTE TRAVEL.

You can read the decision here.

 

Thursday, July 2, 2015

#285 - restorecsa.ca - COMPLAINT DISMISSED

The Complainant is the Canadian Standards Association, a standards development, testing and licencing organization with a global presence. The Registrant, P. S. Knight Co. Ltd., in an Alberta corporation.


After the Complainant sued the Registrant in Federal Court for copyright infringement alleging that the Registrant publishes and sells guidebooks regarding the Complainant's standards that compete with the Complainant books of standards (the "Federal Court Action"), the Registrant registered this Domain Name along with a number of other .com domain names.


The Registrant denies the allegations in the Federal Court Action and resists this complaint, arguing that the Domain is a non-commercial website created for the legitimate purpose of criticism and advocacy.


Pursuant to Paragraph 13.2 of the Policy, The Panel terminated the proceeding holding that the subject matter of the Complaint is merely one aspect of an ongoing dispute between the parties and that the Federal Court is the better forum to resolve the dispute.

You can read the decision here.

Wednesday, June 24, 2015

#284 - business.ca - TRANSFER GRANTED


The Registrant is “Business.ca Incorporated,” which registered business.ca on September 23, 2000. The Complainant is 2193165 Ontario Ltd.

 

The Complainant is the owner in Canada of the design trade-mark BUSINESS.CA, which was registered on March 23, 2004. The Complainant acquired the trademark and the rights in and to the Domain Name from the Registrant on June 30, 2009 by way of an agreement. The Complainant alleges that the Registrant refuses to turn over the username and password to access/transfer the Domain Name.

 

Under the circumstances, the relevant date by which time the Complainant needed to have Rights in a Mark, is not the date of registration, but the date the Registrant purchased the Domain. Furthermore, bad faith on behalf of the Registrant can be determined from common sense inferences from the Registrant’s conduct and other surrounding circumstances.  The Panel ordered the transfer.


You can read the decision here.

Monday, June 1, 2015

#283 - thule.ca - TRANSFER GRANTED

The Domain Name at issue is thule.ca. Thule is a Swedish manufacturer of carriers, racks and cases for transportation. The Registrant, Liang Yingjie is an individual residing in Mississauga, Ontario, who did not respond to the complaint. 
 
The disputed Domain Name was registered on August 21, 2014 without the Complainant's knowledge or permission. Thule registered its trademark in 1981. The complainant registered its thule.com domain name in 1998 and owns 247 "Thule"-related domain names worldwide.
 
The panel found that the Domain Name was registered in bad faith as evidenced by the pay per-click links to third party websites present on the site which disrupted the business of the Complainant for the purposes of financial gain (as well as the banner indicating that the site was for sale).

You can read the decision here.

Tuesday, May 12, 2015

#282 - citizensofhumanity.ca - TRANSFER GRANTED



The Domain Name, citizensofhumanity.ca, was registered on June 17, 2011. The Complainant is the owner of the very popular brand CITIZENS OF HUMANITY, and its trademark registered in Canada in March 2014 (although it was applied for in 2005). The Registrant likely doesn't own a pair of the Complainant's comfortable jeans, and therefore did not respond.

The Panel found that, even though the trademark was not registered until 2014, since the Complainant used the Mark worldwide including in Canada since as early as May 2003 in connection with clothing, the Complainant has had rights in the Mark within the meaning of policy well before it was registered by the Registrant. Furthermore, The Registrant offered to transfer the domain to the Complainant for $6000.00 and was using it to direct visitors to third party websites that sell the Complainant’s jeans, which evidenced bad faith under the policy.

You can read the decision here.

Thursday, May 7, 2015

#281 - fluorgroup.ca - TRANSFER GRANTED


The Complainant, Fluor Corporation is a publicly traded construction company employing 40,000 people around the world. The Registrant is Flour Curling, who did not respond to the complaint. The Complainant first registered its mark FLUOR in Canada in 1973 and fluorgroup.ca was first registered on January 27, 2015.


The Panel Found that the addition of the generic term “group” did nothing to distinguish the Domain Name from the Complainant's registered trade-mark. The Panel found that the Registrant had no legitimate interest in the Domain Name - the use by the Registrant in putting the ® symbol beside the FLUOR trademark in its fake job application shows the Registrant likely knew of the trademark.  Thirdly, the Registrant used the Domain Name "to impersonate Complainant, sending emails to potential job seekers from a "FLUOR CORPORATION <hrd@fluorgroup.ca" email using the name of the actual HR Manager of the Complainant. The panel found that holding itself out as the Complaint was a clear example of bad faith and ordered the transfer.

You can read the decision here.

Friday, May 1, 2015

#280 - keencanada.ca - TRANSFER GRANTED

The Complainant, Keen, Inc. and Keen Canada Outdoor, ULC, uses the trade mark in association with footwear, bags and clothing, starting in 2005.  When the Complainant owned the Domain Name, it used to direct customers to the Complainant’s online sales page and was a very valuable part of its marketing strategy.  The Complainant inadvertently failed to renew the Domain Name in 2014.  The Registrant is using the Domain Name to host reviews of Complainant’s products, and redirect users to amazon.com (and receives a fee when each user is redirected). The Panel found that the Registrant’s use of the Domain Name is likely to confuse consumers into thinking the Complainant is affiliated with the site.

You can read the full decision here.

Saturday, April 18, 2015

#279 - urbansawing.ca TRANSFER GRANTED

The Complainant, Urban Sawing & Scanning Co. Ltd., uses the trade name URBAN SAWING in association with its concrete drilling, sawing and scanning business in British Columbia for 39 years.  In March, 2010 the Complainant registered the domain name urbansaw.com. The administrative contact for the Registrant signed a Letter of Intent (“LOI”) and offered to purchase the outstanding shares of the Complainant, which LOI was eventually cancelled by the Complainant.  On February 26, 2014, the Registrant registered the Domain Name.  The Registrant was operating the web site and directing users to the Complainant’s competitor, but it is now under construction – and states that the domain has been recently sold.

The Panel noted that there was no evidence that the Registrant had rights in the URBAN SAWING trademark or trade name. The Panel found that the LOI was not accepted by the Complainant until after the time the Registrant registered the Domain Name, and there is no automatic color of right with respect to the registration.  The Panel further held that bad faith was established due to the Registrant’s conduct following the cancellation of the LOI, including refusing to transfer the Domain Name to the Complainant and directing the web site to the Complainant’s competitor.


The Panel refused to order costs to the Registrant because it was not successful in its response– and noted that it was troubled by the fact that there were no appendices to the Complaint or any statements made under oath – and the negotiations regarding the LOI were left for Reply submissions (the Registrant was therefore unable to respond).

You can read the full decision here.

Friday, March 20, 2015

#278 - meguiars.ca - TRANSFER GRANTED


The Complainant established its case and the Panelist transferred the Domain Name to the Complainant.
 
The Complainant owns the family of MEGUIAR’S trade-marks registered as early as February, 1968 for use in association with cleaning care products.  The Registrant is Interex Corporate Registration Services Inc.  The Domain Name was a typical pay-per-click site. The Registrant argued that MEGUIARS is a surname, similar to others such as Maguire, Macgwire, etc.  The Registrant also argued that he searched CIPO for MEGUIARS (no apostrophe) but there was no match.  '

The Panel found that the Domain Name was confusingly similar since there can be no apostrophes in the Domain Name.  The Panel further held that the Domain Name was registered in bad faith because the Registrant has engaged in the registration of unauthorized domain names containing 3rd party trademarks including philishave.ca and abercrombiefitch.ca.  The Panel further held that “meguiars” is not a commonly known surname in Canada.
                                                                                                    
You can read the decision here 

Monday, February 2, 2015

#277 - scoutscanada.ca - TRANSFER REFUSED


The Complainant is Scouts Canada, first incorporated by act of Parliament in 1914 and owner of the trademark, Scouts Canada, filed for in 1991 and approved in 1992. ​The Domain Name was registered by 756870 B.C. Ltd. in 2009​. It resolves to a web site containing content critical of Scouts Canada. 

                                   

The Complainant did not file a copy of the registration of the trade-mark. While the Scouts Canada Act made Scouts Canada the Complainant’s name, that was not sufficient to satisfy the use requirement of the Policy because the Policy does not contemplate protecting rights arising from private statutes.

 

Neither party submitted any evidence of the content of the web site (other than opining on the content of the web site) and the Panel held that it was not proper for it to independently research the contents of the site. Accordingly, it found that there was no evidence of bad faith and refused to grant the transfer.

 

You can read the decision here.

#276 - moncler.ca - TRANSFER GRANTED

Moncler S.p.A., the Complainant, is a luxury outerwear brand that first registered its trademark in Canada in 1964.  The Registrant Michael Cohen registered <moncler.ca> without authorization in 2007. The Domain redirected to a notice that the Domain Name was available for sale. Prior to bringing this Complaint, the Registrant contacted Complainant with an unsolicited offer to sell the domain name – in excess of the $275,000.00 offered by an unknown entity.
 
The Registrant's counsel wrote to counsel for the Complainant stating that the offering of the Domain name for sale was an error, and that the Complaint was intending to use the domain in his transport business. The Panel found that there was no evidence to support these bald assertions and found that the Complaint had registered the domain in bad faith and had no reasonable interest in the Domain Name.  


#275 - metalor.ca - TRANSFER GRANTED



The Complainant, a precious metals firm, is the owner of the Canadian trade-mark METALOR, which was registered on September 9, 1994 and has been in use as early as 1982. 

The Registrant (KMB Environmental Inc. c/o/b/ Michael Gupton) resolved the Domain Name to a pay-per-click website populated with sponsored links. The Complainant sent a letter to the Registrant through the CIRA message delivery form advising the Registrant of the Complainant’s rights but received no response. 

The Registrant did not technically respond to the Complaint, but did write several emails to the Panel stating that the domain was "parked", was not being used for any kind of commercial gain and the matter could have been resolved for the reimbursement of his reasonable out of pocket expenses .​ Nevertheless, the panel found that it is a "well-established principle" that resolving a domain name to pay-per-click sponsored links to competitors of a complainant may be considered evidence of bad faith and ordered the transfer of the Domain Name to the Complainant.

You can read the decision
here.