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.