Friday, December 1, 2017

#351 - lurpak.ca - TRANSFER GRANTED

The Complainant owns the LURPAK trademark, registered in Canada since 1994, used since 1957 in association with dairy products.  The Registrant registered the Domain Name in 2016, and operates a pay-per-click website featuring links to the Complainant's competitor's products. 

The Panel found that the Domain Name was registered in bad faith, as it was offered for sale to the Complainant for $5,999.00 USD. Additionally, the Complainant registered around 220 additional domain names including those incorporating well-known trademarks.

You can read the decision here.

Monday, November 20, 2017

#350 - KIJIJIapp.ca - TRANSFER GRANTED

The Complainant is the owner of the KIJIJI registered trademark in Canada, the premiere online classified’s service in Canada to buy/sell/trade. 


The Panel found that the Domain Name was registered in bad faith because the Registrant was offering internet users a competing fraudulent software application using the KIJIJI trademark. 

Although not explicitly addressed by the Panel, this case is a reminder to be very careful when downloading apps to your phone and not unwillingly expose your personal information to these fraudsters. 

You can read the decision here

Thursday, November 9, 2017

#349 - tdeasyweb.ca - TRANSFER GRANTED


The Complainant is the second largest bank of Canada and its tdcanadatrust.com website had 9.6 million visitors in July 2017 alone.  The Complainant owns several trademarks in Canada including TD and EASYWEB. Although the Domain Name was being used by an unrelated website (redirecting users to a website about automobiles, edmunds.com), the Panel found that the Domain Name was registered in bad faith because on “initial interest confusion”, and there was no reason for the Registrant o piggyback on the domain name’s popularity of the TD family of trademarks.


You can read the decision here.

Wednesday, November 8, 2017

#348 - tdbankonline.ca - TRANSFER GRANTED


The Complainant is the sixth largest bank in North America and its tdbank.com website has an estimated 2.61 million visitors per month.  The Complainant owns several registered trademarks in Canada including TD and TD BANK. The Panel found that the Domain Name was registered in bad faith because they were being used as pay-per-click websites forwarding traffic to sites that compete with the Complainant, and the Registrant failed to respond to the Complainant’s attempt to communicate with it through CIRA’s message delivery form.

You can read the decision here

#347 - tdcanadatrusts.ca - TRANSFER GRANTED

The Complainant is the second largest bank of Canada and its tdcanadatrust.com website had 9.6 million visitors in July 2017 alone.  The Complainant owns several registered trademarks in Canada including TD and CANADA TRUST. The Panel found that the Domain Name was registered in bad faith because they were being used in a malicious phishing scheme, and the Registrant failed to respond to the Complainant’s cease and desist letters.

You can read the decision here

Wednesday, October 18, 2017

#346 - agmbasements.ca and agmrenovations.ca - TRANSFER GRANTED

The Complainant offers basement and interior renovations services in Canada using the AGM trademark.  Although not yet registered as a trademark, the Complainant provided website screenshots showing use of the AGM trademark, and evidence of the registration of a business name (years prior to the registration of this Domain Name).  The Domain Name was used by a competing business, and the text of the web site included the terms "WHY WE'RE BETTER", and was forwarding visitors to the website basementscanada.com.

The Panel found bad faith because the Registrant's business was named Penguin Basements, and the Panel could find no other reason to use the AGM mark in its Domain Name other than to trade on the Complainant's goodwill.

Of note: the Complainant asked for its costs, and the Panel opined that paragraph 12.6 (up to $5,000.00 payment to registrant if complaint commenced in bad faith) and 14.4 (non-refundable fees) indicates that CIRA did not intend for costs to be awarded in these administrative proceedings.

You can read the decision here.

#345 - whatsapp.ca - TRANSFER GRANTED

The Complainant owns one of the world's most popular messaging application services, with over 1 billion active monthly users. Its WHATSAPP trademark was registered in Canada in 2012. The Domain Name was registered in 2015. The Registrant did not respond to the Complaint. 

The Panel found that the Domain Name was registered in bad faith as (1) the Registrant acquired the Domain Name shortly after Facebook announced its acquisition of the Complainant, (2) following delivery of a cease and desist letter, the Registrant offered to sell the Domain Name for an amount in excess of its reasonable out of pocket expenses and (3) the Registrant has engaged in a pattern of this wrongful conduct, registering victoriasecret.ca, nordstrom.ca and celinedion.ca.

You can read the decision here.

Saturday, October 7, 2017

#344 - virox.ca - TRANSFER GRANTED


The Complainant, Virox Technologies, Inc., owns the VIROX TECHNOLOGY INC. trademark (registered before the registration of the Domain Name) and was using the VIROX trademark since 2000, long before the registration of the Domain Name.  Nameshield (and it’s notorious representative, Daniel Mullen) argues that it re-registered the Domain Name after registering it several years earlier, despite providing no evidence to that effect. Not surprisingly, the web site was being used as a pay-per-click site.



The Panel found the Domain Name was registered in bad faith because the “nominal” ownership of the Domain Name is in breach of the CIRA Registration Agreement (Nameshield allegedly was the nominal holder of the Domain Name for Diversey Inc., who owned a VIROX design trademark that was the subject matter of an expungement proceeding).  Interestingly, the Complainant filed an Affidavit from a representative of Diversey Inc., disclaiming any claim to the Domain Name and confirmed that Nameshield is not the nominal holder of the Domain Name (on its behalf).  For that reason, the Panel concluded that Nameshield had no legitimate interest in the Domain Name, and Daniel Mullen suffered another CDRP loss.

You can read the decision here

Friday, October 6, 2017

#343 - dxracer.ca - TRANSFER GRANTED

The Complainant, Jiangyin Dexin Auto Parts (Chair) Co., Ltd. owns the dxracer (with Chinese characters above it) trademark (registered since April 2014 and used since 2010 in Canada) in association with office chairs and premium gaming chairs. 

The Registrant registered its Domain Name in 2012 and operated a web site allegedly offering for sale competitor’s products (and Complainant’s products). Following delivery of a cease and desist letter, the Registrant took down the web site. 


The Panel found bad faith and was persuaded by the content on the web site, which included a review from an upset customer that was not only deceived into believing there was a relationship between the Complainant and the Registrant, but also stated that he was defrauded by the web site owner when he paid for products and received nothing in return. 

You can read the decision here.

Friday, September 15, 2017

#342 - KOODOTEL.CA - transfer granted

The Complainants, Telus Corporation and Indeed Canada Corp., own the KOODO trademark (registered since April 2014) and offer telecommunication services including postpaid and prepaid wireless voice and data services, respectively. 

The Registrant registered its Domain Name in May 2017 and offer "black market" mobile phone plans to its customers (where third parties switch users phone plans to provinces in which less expensive rates are available). 


Although there was a small disclaimer on the website, the Panel found it was clearly intended to be overlooked (bad faith), and concluded that there was no evidence of any personal or business interest in the Domain Name (no legitimate interest). 

You can read the decision here

Friday, September 1, 2017

#341 - myindeed.ca - TRANSFER GRANTED

The Complainant provides the world's largest job's website, and owns the registered INDEED trademark in Canada.  In addition to creating a website that was very similar to the Complainant's (using the Complainant's marks), the Registrant was involved in a vicious phishing scheme to obtain personal information from the Complainant's customers.

The Registrant did not respond  to the Complainant's cease and desist letter. The Panel found bad faith as a result of the similarity in the Restraint's website (in comparison to the Complainant's site), and the fact that the Registrant was seeking contact details and a "utility bill, tax document or business document" from the visitors to the Domain Name.

You can read the decision here.

#340 - cheapoairs.ca - TRANSFER GRANTED

The Complainant registered its CHEAPOAIR trademark in Canada in 2011.  The Registrant added an "s" to the mark, and registered the Domain Name on January 18, 2016. The Panel found that the Domain Name was registered in bad faith because the Registrant directed users to a competitor's website.  Additionally, the after receiving a cease and desist letter, the Complainant parked the page (offering it for sale), and never responded to the Complainant's offer to reimburse the reasonable costs associated with the registration and transfer of the Domain Name to the Complainant.

You can read the decision here.

Thursday, August 17, 2017

#339 - rsrs.ca - TRANSFER GRANTED

The Complainant, Record Storage & Retrieval Services Inc. established common law use of the RSRS mark in Canada by providing magazine advertisements published in the Ontario Medical Review in 2009, before the Registrant registered the Domain.  The Complainant specialize in document management. 

The Domain Name forwards users to the Docudavit website, a direct competitor of the Complainant. The Panel found that the Domain Name was registered in bad faith because the Complainant failed to renew its domain name and the Registrant pounced on this opportunity to financially benefit.  However, the Registrant's attempts to sell the Domain Name to the Complainant for between $7,500.00 - $10,000.00 (an estimate he believed was half the amount of litigating this dispute) completely failed.

You can read the decision here.

Friday, June 30, 2017

336 - armanibeauty.ca - TRANSFER GRANTED

The Complainant is one of the most famous fashion brands in the world, (based out of Italy) and owner of the ARMANI trademarks registered in Canada since 1992. 

The Panel found that the Domain Name is confusingly similar to the ARMANI mark and the addition of the term 'beauty' adds to any potential confusion given that the Complainant carries on business in that field. 


The Panel found that the Domain Name (used as pay-per-click) was registered in bad faith because the $90.00 offer located on the web site was simply a minimum offer and the Registrant would facilitate a "quick transfer at the price of $1,999". 

335 - regeneron.ca - TRANSFER GRANTED

The Complainant, Regeneron Pharmaceuticals, Inc. is a leading science and technology company delivering life-transforming medicines for serious diseases, and owns the REGENERON trademark in Canada (registered since 1998). The Registrant registered the Domain Name in December, 2016 and did not technically respond to the Complaint. The panel found that the Domain Name was registered in bad faith because the Registrant was engaged in a pattern of conduct registering domain names belonging to third party rights holders, had previously lost in an unrelated UDRP proceeding, and in response to this Complaint delivered an email offering to sell the Domain Name to the Complainant in the amount of $1,500.00. 

Friday, April 28, 2017

#334 - midea.ca - TRANSFER GRANTED

The Complainant owns several MIDEA trademarks registered in Canada. Despite the Registrant's request to file a late response (albeit after the deadline), the panel refused to do so citing paragraphs 5.4 or 5.6 of the Rules.  Despite relying on the UDRP, the Panel found that the Domain Name was registered in bad faith because the registered mark had been well known and used for many years in Canada and was well known.  The Panel did not infer bad faith based on the evidence that the Registrant was inviting offers for purchase of the Domain Name.

You can read the decision here.

#333 - wilsonamplifiers.ca - Domain Transferred

The Domain Name was registered on September 20, 2015.  The Registrant was using the Domain Name to offer for sale and sell competing products (wireless equipment with the brand SURE CALL). The Panel found bad faith because the Complainant had been selling equipment since 2000, and the Registrant was not licensed or authorized by the Complainant.

You can read the decision here.

Thursday, February 16, 2017

#332 - cathaydragon.ca - TRANSFER GRANTED

The Complainant, Cathay Pacific Airways Limited owns the CATHAY PACIFIC and DRAGONAIR trademarks in Canada.  It previously lost a complained filed with Resolution Canada in July, 2016 without prejudice to seeking further relief by arguing rights in a Mark based on its trade name CATHAY DRAGON (instead of a trademark).

On January 28, 2016, the Complainant announced that it was re-branding its airline to CATHAY DRAGON.  That same day, it applied for trademarks in several countries, including Canada.  The Domain Name was registered 2 days later, on January 30, 2016. The Registrant did not respond.


The Panel found that the re-branding announcement on January 28, 2016 qualifies as evidence that the Complainant began trading under the CATHAY DRAGON trade name, which qualifies as a Mark under the Policy (paragraph 3.2(a)).   The Panel found bad faith based on the suspicious timing of the registration, and because the Registrant was offering the Domain Name for sale for 7,999 EUR. 

You can read the decision here

Thursday, February 2, 2017

#331 - vibram.ca - TRANSFER GRANTED

The Complainant, Vibram S.p.A., is a popular manufacturer of rubber outsoles for footwear. The Registrant is Interex Corporate Registration Services Inc. (often represented by known cyber-squatter Daniel Mullen). The Domain Name was registered on August 31, 2009.

The Registrant attacked the Complainant’s registered trademark, and argued that the Complainant should fail on the basis of the doctrine of laches since the Complaint was filed seven years after registration of the Domain name.  


The Panel correctly found: (1) that this is not the appropriate forum to dispute the validity of a registered trademark, (2) clarified the test for assessing confusion (first impression and imperfect recollection) which is different from a section 6(5) Trademarks Act analysis (see: fordparts.ca decision), and (3) found bad faith because the Registrant has engaged in a pattern of unauthorized domain name registrations containing third party trademarks - there are numerous previous CDRP decisions involving the Registrant and Daniel Mullen.  

You can read the decision here

Tuesday, January 24, 2017

#330 - homedpeot.ca - TRANSFER GRANTED

The Domain name at issue is homedpeot.ca. Home Depot International, Inc. (and Home Depot of Canada Inc.) is Canada’s leading home improvement specialty retailer with 182 stores across Canada. The Registrant registered the Domain Name on November 11, 2005, and Home Depot registered the HOME DEPOT trademark in Canada in 1999, but entered the Canadian market in 1994. 

The Registrant, a known cyber-squatter, Terry Davies, did not respond. The Panel found there was evidence of bad faith because the Registrant was operating a pay-per-click website linking users to competing businesses (including Lowe’s) and the Registrant had previously typo-squatted other domain names belonging to rights holders in the past, including, aircanadaa.ca, costcoo.ca, cotco.ca, and toytota.ca.

You can read the decision here