Monday, September 26, 2016

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.

Thursday, September 22, 2016

#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.

Tuesday, September 13, 2016

#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.

Friday, September 9, 2016

#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.