#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. 

#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.