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.
You can read the full decision here.
