#329 - capitalonecallcentrejobs.ca and emploiscentredappelscapitalone.ca - TRANSFER GRANTED

The Complainant owns the CAPITAL ONE trademarks.  The Domain Names were registered in May, 2014.  The Domain Names resolved to websites containing information about the Complainant, and use of the Complainant's trademarks.  The websites appear to be some form of phishing campaign - there was a large red APPLY ONLINE HERE button on the website. 


The Panel found that the Domain Name was registered in bad faith because the Registrant was attempting to pass itself off as the Complainant. 


You can read the decision here.

#328 - huronconsultinggroup.ca - TRANSFER GRANTED

The Complainant owns the HURON CONSULTING GROUP trademarks registered since February 17, 2017 and has conducted business in Canada since at least 2005.  The Domain Name was registered on July 8, 2016 and resolves to a replica of the Complainant's website containing.  Following delivery of a cease and desist letter, the Registrant parked the website and it does not currently resolve to any active website. 


The panel found bad faith because the domain name was involved in a malicious phishing scheme purportedly offering employment with the Complainant and soliciting applications and other materials from the recipients of the emails. 


You can read the decision here.

#327 - terminix.ca - TRANSFER GRANTED

The Complainant owns the TERMINIX trademark registered for use in association with pest control services.  The Complainant has been using the trademark in Canada since 1982. The disputed Domain Name was registered on November 17, 2016 and is a typical pay-per-click website.


The Panel found that the Domain Name was registered in bad faith because there was evidence indicating that the Registrant was associated with another website offering services that compete with the Complainant.  The owner of this website was listed as the owner of the copyright on the other site which implies it has a commercial interest in the website. 


You can read the decision here.

#326 - picmonkey.ca - TRANSFER DENIED

The Complainant owns the PICMONKEY trademark and offers online photo-editing software called "PicMoney".  The PICMONKEY trademark was registered as of February 26, 2016 for use in association with image processing software design.  The Domain Name was registered on April 10, 2012 and operates as a pay-per-click website.  After the Complainant delivered a cease and desist letter, the Registrant's domain broker "Shaun" indicated the Registrant might engage in negotiations to sell the Domain but only after the Complainants cancelled the proceeding.


The Panel found that the filing date of the trademark application (March 12, 2012  - approximately one month before the Domain was registered) is not sufficient to establish use of the trademark in Canada.  In this Complaint, there was no evidence filed of any use of the PICMONKEY trademark in Canada before the Domain Name was registered.


You can read the decision here.

#324 - coulisse.ca - COMPLAINT DENIED

The Complainant, Coulisse B.V., is an international leading designer, manufacturer and supplier of window coverings using the COULISSE trademark. Despite counsel’s attempts to contact the anonymous Registrant and purchase the Domain Name, it was not successful. The COULISSE trademark was registered as of February, 2015 with a date of first use as early as December 31, 2007.  The Registrant registered the Domain Name on September 30, 2008.

The Domain Name, coulisse.ca, resolves to a parked site containing the language: “FUTURE HOME OF SOMETHING QUITE COOL”.  The Panel rejected the Complaint and noted that there was no evidence of bad faith submitted, namely, that the business of the Complainant was not being disrupted, there was no commercial gain as at the time of the Complaint, and that there was no evidence of any pattern of cybersquatting.  The Panel noted that COULISSE was a word in the French language, and not a coined term.   

You can read the decision here.

#323 - osim.ca - TRANSFER GRANTED

The Complainant, OSIM International Ltd., is engaged in the industry of the provision of healthy lifestyle products and has a family of trademarks including the OSIM registration in 2006.  The Registrant registered its Domain Name in 2005, but OSIM provided evidence of prior use of its mark since 2002 (and it registered its .com domain name in 1997). The Registrant demanded payment in the amount of $10,000.00, and the domain is not being used for any purpose, but was registered by Isabelle Yang for his daughter, as OSIM is her nickname (derived from a widely popular soap opera character in Japan).


The Panel carefully considered the Registrant’s comments and noted the lack of tangible evidence/support for the Registrant’s position, namely, that there was no evidence of the soap opera character, no evidence OSIM was a common name, that the nickname as in fact the daughter’s actual nickname, that he never knew of the OSIM name “at least in Toronto”, and that he lives in the same area in British Columbia as OSIM’s retail stores. 


You can read the decision here.

#322 - getmichelintires.ca - TRANSFER GRANTED

The Complainant, Compagnie Generale des Establissements Michelin, is one of the world’s largest tire manufacturers. The Registrant is Jason Hughes, and he did not respond to the Complaint. The Complainant had worldwide revenue in 2012 over 30 billion CAD.

The Domain Name, cheapmichelintires.ca, is currently being used to forward customers to getcheapparts.ca containing goods, including Michelin tires and products from competitors.  The Panel found that the Domain Name was registered in bad faith because the Registrant would be motivated by commercial gain and use the MICHELIN trademark to attract users to its site.

You can read the decision here.

manulife-denial.ca - TRANSFER REJECTED

The Domain name at issue is manulife-denial.ca. The parties are well known to each other as the Complainant successfully brought a previous CDRP (manulifedenial.ca) and UDRP proceeding.  Further, the Registrant previously acted as in-house counsel for the Complainant from 2002 – 2012.   The Registrant registered the Domain Name in April, 2016, and Manulife asserts rights in the MANULIFE trademark for over 125 years.

 

The Registrant argues that it has a legitimate interest in the Domain Name because it acts on behalf of individuals with lawsuits against Manulife.  The Panel found that the first impression of the name manulife in the context of consumers looking at the domain name is (1) simply a reference to Manulife and being used as names are ordinarily used and (2) everyone has the right to use others’ names for that purpose.  Despite numerous cases on this point (including the previous CDRP case relating to this domain, this trademark and these parties), the Panel found that the rights given to trademark owners do not extend to control everything that is said or done by others in reference to their trade marks and trade names.

 

The Panel dismissed the Complaint which can be found here.

#320 - Lndeed.ca - TRANSFER GRANTED

The Complainant, Indeed, Inc. and Indeed Canada Corp, own the INDEED family of trademarks (one was registered as early as 2010) in association with computer services. The Domain Name was registered on February 15, 2016, and the Registrant did not respond to the Complaint.

The Complainant alleges that the Registrant was sending unsolicited emails to internet users from the email address adodd@lndeed.ca and fraudulently misrepresenting that the Registrant was an employee of Indeed and requesting that the recipient provide personal and confidential business information. The web site used to forward users to Complainant’s authorized site, and later resolved to a sign in page featuring the complainant’s INDEED marks and prompted users to enter an email address and password.

The Panel summarized its findings, as follows: “This is clearly a situation of typosquatting which the Panel defined as an attempt to benefit from the typographical error of the internet user based on confusion over the actual domain name. An alternative form of typosquatting is benefiting from internet traffic based on common misspellings or mistyping of the names of high traffic websites. Bad faith was established from actual conduct of the Registrant in attempting to confuse the public into believing the Registrant or someone using the domain as an email address was actually sending mail from the Complainants web domain.”

You can read the decision here.

#311 - squamishvalleymusicfestival.ca - TRANSFER GRANTED

The Complainant and its partner Brand.Live Management Group Inc. have been producing a contemporary music festival in Squamish, BC since 2010, and using the name Squamish Valley Music Festival from November 2012 to March, 2016.  The trademark was registered in 2016. 


In 2013 after the Registrant registered the Domain Name, the web site was technically inactive (under development).  The parties attempted to negotiate a resolution including transfer of the Domain Name, but failed.  In March, 2016, after the announcement that the festival was cancelled, the parties continued to communicate, and the Registrant advised that he "also might be interested in running a smaller version of the Squamish Valley Music Festival as a temporary use on my Garibaldi Springs Golf Lands". 


The Panel found that the Registrant registered the Domain Name in bad faith because the evidence clearly shows that the Registrant knew of the rights belonging to the Complainant and had no affiliation with nor lice to use the trademarks and is essentially a competitor of the Complainant.  Further, the Registrant engaged in a "pattern of unauthorized registrations" by registering other .com's using the Complainant's trademark.


You can read the decision here.

#317 - gmailsupport.ca / gmailsupportcanada.ca / gmailsupportnumber.ca - TRANSFER GRANTED

The Complainant, Google Inc., is a little-known company based out of Mountain View, California offering free web-based email services using the GMAIL trademark with over one billion monthly users as of February 2016. The Registrant never responded to the Complaint.

The Domain Name resolves to a web site that contains the exact layout and format of the Complainant’s web page leading users to believe they have reached the legitimate GMAIL support site.

The Panel found that the Domain Name was registered in bad faith because the Registrant is clearly seeking commercial gain in that the GMAIL support services purporting to be provided are chargeable and without license from the Complainant. The disclaimer on the site cannot by itself cure this bad faith. (paragraph 3.5(d) of the Policy).

You can read the decision here.

#318 - fordparts.ca - TRANSFER GRANTED

The Complainant, Ford Motor Company of Canada, Limited, owns the Ford trademark (registered in 1912). The Registrant operates a pay-per-click site, and did not respond.

The Panel found that by redirecting traffic from fordparts.ca to other sites competitive with Ford creates a clear impression cause confusion, disruption and hijacking of Complainant’s business. Interestingly, in finding that the marks were confusingly similar, the Panel embarked upon a section 6(5) Trademarks Act analysis instead of the typical analysis used by panels, namely, that the domain name resembled the trademark in appearance, sound or ideas suggested by the trademark as to be likely mistaken for the trademark.  

You can read the decision here.

#316 - hsbcdirect.ca - TRANSFER GRANTED

The Complainant, HSBC Group Management Services Limited, one of the world’s largest banking and financial services companies owns the HSBC DIRECT trademark, registered in Canada since 2005.  The Registrant registered this domain during the auto-grace renew period after the Complainant let it expire on November 21, 2014.

The Domain Name resolves to a web site that, without the consent of the Complainant, has unauthorized references to HSBC, its logo and its website and email address, and promotes itself as a “money saving organization” by providing money and debt advice. The Registrant did not respond to the Complaint.

The Panel found that the Domain Name was registered in bad faith because the Registrant embarked on a deliberate attempt to pretend that it was the complainant or that it was somehow endorsed by the Complainant, which is deceptive and untrue (paragraph 3.5(d) of the Policy).

You can read the decision here.

#315 - mahee.ca - TRANSFER GRANTED

This decision is in French and can be found here.

#314 - downtownford.ca and faniilypricing.ca - TRANSFER GRANTED

The Complainant, Ford Motor Company of Canada, Limited, owns the Ford trademark (registered in 1912) and the FAMILY PRICING trademark (registered on March 18, 2008). The Registrant is a sales specialist at an authorized Ford dealership.
 

The Complainant alleges that despite the Registrant initially agreeing to transfer the Domain Names, the Registrant then demanded $150,000.00 as compensation for the “negative consequences” associated with this matter, the right to continue to use the Domain Names, and an apology letter.  In the Registrant’s response, he states that he has the right to use the Marks, finds the allegation of bad faith defamatory, and wants compensation of $14,800.00 for legal and website costs.

The Panel found that because there was evidence that the sales specialist employer at Ford was unaware of the Registrant’s use of the Domain Name, and because they instructed the Registrant to cease use of the Domain Names during the course of employment, the Domain Names were registered in bad faith (paragraph 3.5(d) of the Policy).

You can read the decision here.

#313 - manulifedenial.ca - TRANSFER GRANTED

The Domain name at issue is manulifedenial.ca. As at the date of drafting this summary, manulifedenial.ca mirrors fishmanlawyers.ca, which includes a link to “Manulife Cases” containing blog-like entries, and information relating to Jan Fishman’s legal practice. The Registrant registered the Domain Name on December 7, 2015, and Manulife asserts rights in the MANULIFE trademark for over 125 years.

The Registrant argues that it has a legitimate interest in the Domain Name because it acts on behalf of individuals with lawsuits against Manulife.  The Registrant further argued that the Domain Name is not confusingly similar, and relied on the British Columbia Court of Appeal icbcadvice.ca case, but the Panel distinguished this case because there was evidence of numerous active “icbc” related Domain Names.

The Panel found there was evidence of bad faith because the Registrant sent an unsolicited letter offering to sell this domain name (and others using the MANULIFE mark) for $250,000.00. 

You can read the decision here.

#312 - enterpise.ca - REGISTRATION CANCELLED

The Complainant is Enterprise Holdings, Inc., owner of the popular ENTERPRISE trademarks registered for use in association with vehicle rental services, amongst other things. The Registrant was operating a pay-per-click site, and registered the Domain Name on December 28, 2005. By deleting the second 'R' from enterprise, the Domain Name was considered a clear case of typo-squatting by creating a likelihood of confusion with the ENTERPRISE trademark as to the source, sponsorship, affiliation or endorsement of the Registrant's web site.


You can read the decision here.

#311 - ameco.ca - TRANSFER REFUSED

Fluour Corporation is the Complainant.  In 1977, American Equipment Company, Inc. was acquired by the Complainant, and is currently a wholly owned subsidiary of the Complainant.  American Equipment Company, Inc. obtained the AMECO trademark in 2000.  The Respondent asserts the position that the Complainant is a United States company without  a Canadian trademark, and therefore is ineligible to hold  a .ca domain name. 

The Complainant asserted that it was satisfied the Canadian presence requirements as a result of the "ownership" of the AMECO trademark. However, the Panel found that the Complainant did not own the trademark, and therefore dismissed the complaint without prejudice to the actual owner (American Equipment Company, Inc.) from seeking relief in the future.

You can read the decision here.

#310 - creativeartistsagency.ca - TRANSFER GRANTED

The Complainant, OHM, Inc., uses the trademark CREATIVE ARTISTS AGENCY in association with its highly popular sports agency services. The Registrant registered Domain Name on July 31, 2015, and is using the website to impersonate the Complainant and advertise that it represents over 200 artists in all fields.  Furthermore, the Registrant uses an email address associated with the Domain Name to perpetrate its fraud.  In its bad faith analysis, the panelist held that the continued use of the Domain Name by the Registrant would preclude the Complainant from choosing how it is represented online, an important business consideration for the Complainant (business run on reputation).  

You can read the decision here. 

#309 - mobilemini.ca - TRANSFER DENIED

The Complainant, Mobile Mini Inc., owns the MOBILE MINI design trademark registered for use in association with metal containers and rental of metal containers for the storage and transportation of goods (used in Canada at least as early as 1990).  The Registrant operates a pay-per-click website with links relate to cell phones and related products/services and digital images of the back of person looking into a self-storage locker and another image that appears to show wooden storage crates in a warehouse.   The Registrant is connected with Ontrack Container Sales Ltd., and despite requesting an extension, did not file a response.  The Panelist disagreed that the Domain Name was registered in bad faith because the Complainant’s were not competitors (no evidence relating to this point in 2006 at the time the Domain Name was registered), the web site makes no reference to the Complainant (cell phones can be fairly characterized as MOBILE and MINI), and there is likely no confusion despite ten years of parallel use.  

You can read the decision here. 

#308 - magnacanada.ca - TRANSFER GRANTED

The Complainant, Magna International Inc. is a global automotive component supplier providing automotive content including seating systems, for virtually every automotive manufacturer of every major brand in the world. Complainant’s sales in 2014 were in excess of 36 billion dollars. The Complainant owns numerous trademarks, including MAGNA, registered in Canada more than 30 years before the Registrant registered its Domain Name, magnacanada.ca.

Despite the Complainant’s attempt to reach out to the Registrant through the CIRA message delivery form, its request to cease the unauthorized use of the Domain Name was ignored by the Registrant. The Panel found that the Domain Name was registered in bad faith because the Domain Name was being used to deceive prospective employees interested in employment at Magna by providing misinformation, and inaccurate statements of Magna’s Employee Charter.

You can read the decision here.

#307 - kiijij.ca, kijigi.ca, kijiijii.ca, kijjijji.ca, kilili.ca, kingstonkijiji.ca, kjiji.ca and wwwkijiji.ca - TRANSFER GRANTED

The Complainant owns Canadian trademark registrations for the trademark KIJIJI, registered February 12, 2008. The trademark registration was before five of the disputed domains were registered, but subsequent to three. The Panel found that since the Complainant had used the mark in Canada since 2005 and registered the kijiji.ca domain name on January 18, 2005, the Complainant had rights in the Mark prior to the registration of the disputed domains.

 

The Panel refused to find that bad faith was established pursuant to 3.5(b) of the Policy (preventing the Complainant from registering the domain names), because the domain names were variations of the trademarks, not the KIJIJI trademark itself, and the Panel is therefore required to consider the intention of the Registrant.

 

The Panel did find that bad faith was established pursuant to 3.5(d) of the Policy (intentionally attracting internet users for financial gain).

You can read the decision here.

#306 - montrealcareylimo.ca - TRANSFER GRANTED

The Complainant operates an international chauffeured limousine service business in association with the CAREY trademark. The Complainant has operated its limousine service business in association with the CAREY trademark in Canada since 1982.

 

The Panel noted that while the Complainant failed to provide evidence of trademark searches to indicate that the Registrant does not have a legitimate interest in the term “CAREY,” it found that the distinct nature of the CAREY trademark, and the Registrant’s use of the Domain Name for a deceptive web site (reproducing portions of the Complainant’s web site) were sufficient to satisfy the Complainants’ evidentiary burden to provide some evidence that the Registrant had no legitimate interest.  With respect to bad faith, the Panel noted that there is rarely “direct evidence” of bad faith and in most cases it is based on common sense inferences of the registrant’s conduct and other surrounding circumstances.  In this case, the trademark was registered for several years prior to the domain name registration, the domain name contains additional descriptive terms implying the registrant knew of the Complainant’s business, and the Registrant’s web site copied substantial parts of the Complainant’s web site.

You can read the decision here.

#305 - hairfinity.ca - TRANSFER GRANTED

The Domain name at issue is hairfinity.ca. The Complainant owns the HAIRFINITY trademark registered for use in association with vitamin supplements.


The disputed Domain Name was registered on April 7, 2015, two weeks before the HAIRFINITY trademark was registered with CIPO. However, the Complainant has used the HAIRFINITY trademark in Canada since as early as January, 2008.  The Complainant has a large online presence, including through its hairfinity.com domain name, Instagram and Facebook.


The panel found that the Domain Name was registered in bad faith as evidenced by the pay per-click links to third party websites including Indigo, a popular bookstore that also sells personal care and body care products. Additionally, the Registrant had previously been involved in 3 UDRP cases proceedings, all of which found the Registrant had used third party trademarks in bad faith.


You can read the decision here.