#379 - stripmeister.ca - MATTER RESOLVED BETWEEN THE PARTIES

The parties settled the dispute, and CIRA posted the correspondence from both the Complainant and Registrant's counsel confirming the Registrant's approval to transfer the Domain Name to the Complainant.

#378 - panavision.ca - TRANSFER GRANTED

The Complainant owns the PANAVISION family of trademarks, and is one of the world's most recognized providers of ultra-precision digital imaging and visual cinematographic equipment and other accessories for the motion picture, television, and related industries. The Registrant is using the Domain Name as a pay-per-click site.  The Registrant filed a deficient response including a cover page, Registration certification and several blank pages. Despite an invitation to submit an amended complaint, he failed to do so.

The Panel held that the Domain Name was registered in bad faith by a serial cybersquatter, Daniel Mullen. The Complainant relied on the numerous unauthorized domain name decisions involving Mr. Mullen: birkenstocks.ca, oscardelarenta.ca, chipotles.ca, royalcanadianlegion.ca, balenciaga.ca, louisvilleslugger.ca, cadillacs.ca, and canadagoosestore.ca.

Interestingly, there was a dissenting opinion of James Plotkin.  He found that the Domain Name was not registered in bad faith because there is no evidence *in this case* that Daniel Mullen registered the Domain Name to prevent the Complainant from doing so. Additionally, he finds that the Panel should not rely on UDRP principles, and that no visitor to the website would think it was the Complainant's website or that the Complainant was affiliated with it. 

You can read the decision here.

#377 - knorrbremse.ca - TRANSFER GRANTED

The Complainant manufactures braking systems for vehicles using the KNORR-BREMSE trademark (registered in Canada and in use since 1975).  The Registrant purports to offer to sell goods belonging to the Complainant, and the Complainant's competitors.

The Panel found that the Domain Name was registered in bad faith because the Registrant knew of the Complainant's mark, and was using the mark to bait users into making a purchase on the website, and then switching the products to Complainant's products.

#376 - lumileds.ca - REFUSED

The Complainant owns the LUMILEDS registered trademark (registered after the date of the Domain Name registration) but alleges it commenced use in Canada since 2001.  The Registrant (based in Quebec) also uses the LUMILEDS trademark in Canada (he combined Lumiere (French translated word for Light) and LEDS (light emitting diode in plural), and started his business, Lumileds Inc., after he searched CIPO, and noticed that the Complainant had abandoned the LUMILEDS trademark in Canada.

The Complainant delivered a cease and desist letter, but the matter did not resolve between the parties. 

The Panel refused to decide whether the Registrant had a legitimate interest in the Domain (on the question of whether the legal name of the Registrant must exist at the time of the registration of the Domain Name – since it incorporated Lumileds Inc. after it registered the Domain Name).

Instead, the Panel found that the Domain Name was not registered in bad faith.  The Panel was unable to conclude that the Complainant had been using the mark as of the date of the Domain Name Registration (or that it asserted trademark rights prior to a later-dated 2014 LUMILEDS trademark application).  Additionally, the Panel found that the Registrant had a disclaimer on the site and, despite being competitors, arguably was not trying to drive traffic away from the Complainant’s business.  The Panel found that there are competing claims for trademark and domain name rights, which is outside the scope of a CDRP proceeding.

You can read the decision here.

#375 - c2cjournal.ca - TRANSFER GRANTED

The Complainant owns the unregistered trademark, 'c2c Journal' which has been publishing online since 2006 - a tongue-in-cheek play on "Sea to Sea".  The Complainant alleges the Domain was transferred in September of 2017 by an individual employee/contractor of the Complainant to a separate account with the same Registrar.  Although the Domain is still technically owned by the Complainant, it alleges it has lost control over the Domain, and the Registrant has authority to terminate the domain or point it to a different website.

The Panel found that the transfer was made in bad faith because there was great confusion after the Domain was taken out of the Complainant's control, the Registrant obviously knew of the Complainant's rights in the Mark, and the Registrant failed to respond to the allegations.

You can read the decision here.

#374 - wd40.ca and wd-40.ca - TRANSFER GRANTED

The Complainant owns the WD-40 trademark (registered in Canada since 1962,) and does its part to help bring an end to squeaky doors across Canada, through the use of its highly popular lubricant/spray.

The Panel held that the Domain Names were registered in bad faith because the Registrant set up websites offering visitors to join Facebook, and make quick money by using Bitcoin. Sounds too good to be true. The Panel agreed that using the Complainant's trademark for illegal means is bad-faith in general.

You can  read the decision here.

#373 - bmwregina.ca - TRANSFER GRANTED

The Complainant owns the popular BMW family of trademarks, registered in Canada for use in association with vehicles among other goods and services.  The Registrant is a competing auto parts dealer that is using the website by reproducing the BMW design marks, and falsely suggesting a sponsorship or affiliation with the Complainant.

The Panel correctly held that the Domain was registered in bad faith because the web site was offering similar services to the Complainant.

You can read the decision here.

#372 - potterybarnbaby.ca - TRANSFER GRANTED

The Complainant owns the very popular POTTERY BARN and POTTERY BARN KIDS trademarks, registered in Canada prior to the registration of the Domain Name. Interestingly, the Registrant owns a competing business, pinkiblue, but is using the website as a pay-per-click site. 

The Registrant was represented by counsel and requested adjournments and suspension of the Complaint, which the Panel refused to do. The Panel found that the Domain Name was registered in bad faith because the Registrant owned numerous brand-name .ca domain names including babybjorn.ca, buybuybaby.ca, westcoastkids.ca, and bumbleride.ca, among others. Additionally, the Registrant was obviously capitalizing on the Complainant's marks. 

The Panel had an interesting discussion on the production of without prejudice settlement emails exchanged between the parties (and the potential panel bid in reviewing these documents), and despite offers to sell the domain name for in excess of reasonable fees associated with registering the domain name, it refused to find bad faith on this basis. 

You can read the decision here. 

#371 - rxbar.ca - TRANSFER GRANTED

The Complainant owns the popular RXBAR registered for use in Canada in association with protein bars and other goods.  The Complainant uses the rxbar.com website. The Complainant established rights in the mark (registered February 10, 2016) and well prior to the June 1, 2017 registration date of the Domain Name.


The Panel found that the Domain Name was registered in bad faith because it was offered for sale to the Complainant in the amount of $50,000.00 USD.  The Respondent attempted to argue that the offer was an "I don't want to sell price", but the Panel found that this was an offer in excess of the Registrant's costs.


Despite attempting to argue that the Registrant was creating a gathering place to create a "RelaxBar", or "social bar business", the Panel found that it did not have a legitimate interest in the Domain Name because it provided no evidence of any action to establish its business.

You can read the decision here.

#370 - basfproducts.ca - TRANSFER GRANTED

The Complainant stated that it is the largest chemical company in the world, and owner of the BASF trademark, with a family over 1,500 trademarks worldwide.  The Domain Name is not in use, and the Registrant did not respond to the Complaint.

The Panel found that the Domain Name was registered in bad faith because the trademark was so well known.  Additionally, there was evidence that the Registrant registered basfproduit.com, evidencing knowledge of the BASF trademark (and the French language, of course!).  Additionally, the panelist cited the "passive holding doctrine" in the WIPO overview, and given the strength of the Complainant's trademark, agreed that "good faith use" of the Domain Name is implausible.

You can read the decision here.

#369 - deltanine.ca - TRANSFER GRANTED

The Complainant is based in Winnipeg, Manitoba and obtained a production licence from Health Canada under the Marijuana for Medical Purposes Regulations in December 2013 (and a license to distribute medical cannabis was granted in March 2014).  It owns the family of unregistered trademarks DELTA 9, which were used in Canada since at least as early as December 2013.  The Registrant is a "competitor" of the Complainant operating an illegal marijuana dispensary (which has been robbed, raided by the Police and shut down several times).

The Panel found that the Domain Name was registered in bad faith because the services offered by the Registrant compete with the Complainant (albeit illegally so). Additionally, the Panel held that there is a real danger to the goodwill of the Complainant's business if internet users are diverted to an illegal business.

The Decision can be found here.

#368 - redwingshoes.ca - TRANSFER GRANTED

The Complainant (founded in 1905) owns the family of RED WING trademarks, and registered for use in association with footwear. The Domain Name was registered in July, 2017, and the Registrant did not respond to the Complaint.  Currently, the Registrant directs consumers to a third party site at reddhart.ca, which sells footwear protects for brands other than the Complainant.

The Panel found that the Domain Name was registered in bad faith because the Registrant was attempting to find buyers for its footwear products.

You can read the decision here.

#367 - kijijiautos.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 using a pay-per-click website offering “competing” services, as one of the links was “cheap used BMW cars”. 

You can read the decision here.

#366 - thepetplan.ca - TRANSFER GRANTED

The Complainant is an Allianz Insurance subsidiary, and owns the PET PLAN trademark, registered for use in association with insurance brokerage services in connection with health insurance for domestic animals (registered in Canada since 1996). The Domain Name was registered on December 5, 2017.  The Domain Name was being used as a pay-per-click website, and was being offered for sale $2,500.00, well in excess of any reasonable out-of-pocket expenses.  The Panel found that the Domain name was registered in bad faith – in part because of the conflicting e-mail responses to BCICAC following delivery of the Complaint (no formal response was provided).  He first stated that he intended to use the Domain Name as a hobby blog.   He later said that he wished to delete the Domain name and intended to do so “from day 1”. 

You can read the decision here. 

#365 - lemetropolitain.ca - TRANSFER GRANTED

The Complainant publishes a French language weekly newspaper, Le Metropolitain within the Greater Toronto Area.  It first published the newspaper in 1993, with weekly readership of approximately 10,000 people. The Complainant registered LE METROPOLITAIN as a trade name in 2013.  The Registrant publishes a weekly French language newspaper called L'Express, and is a main competitor of the Complainants.

The Complainant alleges that the harmful conduct includes directing visitor's to the Registrant's website (l-express.ca) which reduces the amount of revenue that the Complainant is able to generate from advertisers.

Although no formal response was provided, the Registrant agreed to "voluntarily release the domain name".  However, the Complainant requested the decision and the Panel found that the Domain Name was registered in bad faith because the Registrant chose the Domain Name with a view to attracting business from those that recognize the Complainant's trademark. Given that the two parties are direct competitors, there is little doubt that the Registrant was aware of the Complainant's trademark at the time it registered the Domain Name.

You can read the decision here.

#364 - paylesshoes.ca - TRANSFER GRANTED

The Complainant opened its first PAYLESS SHOESOURCE retail shoe location in Canada in 1997, and now operates over retail locations across 10 provinces.  In 2008, its sales were in excess of $180,000,000.00/year and over 25,000,000 pairs of footwear sold.  The Registrant registered its Domain Name in 2004, long after the Complainant registered its trademarks.

The Panel found that the Domain Name was registered in bad faith because the Registrant was operating pay-per-click site, and obtaining advertising revenue from third parties.

You can read the decision here. 

#363 - sinex.ca - TRANSFER GRANTED

The Complainant, The Procter & Gamble Company, owns the SINEX trademark, used in Canada since 1960, in association with sinus relief products.

The Panel held that the Registrant’s asking for a quote/offer after delivery of a cease and desist letter by the Complainant was not is evidence of bad faith. However, the Panel found that use of the Domain Name with sponsored links to allergy nose sprays including the Complainant’s competitors was evidence of bad faith. 

You can read the decision here.

#362 - vfis.ca and vfiscanada.ca - TRANSFER GRANTED

The Complainant is a US organization providing insurance services in Canada through licensed agents for several decades using the VFIS mark (registered in Canada as early as 1994, long before the disputed domain names were registered in 2015).  The Registrant used the domain name to forward users to its website, providentbenefits.ca, offering competing insurance products. 

The Panel found that the Domain Name was registered in bad faith because the Registrant is a competitor of the Complainant, and the website is likely leading to further financial loss to the Complainant. 

You can read the decision here

#361 - mypillow.ca - COMPLAINT DENIED

The Complainant owns the MYPILLOW trademark registered since March, 2013 with a date of first use in Canada in January, 2008.  The Registrant registered in the Domain Name on March 2, 2010.  The Domain Name redirects users to the Registrant's primary business, www.ecoeteco.com (where the Registrant does sell pillows).  The Registrant states that she was unaware of the existence of the Complainant's mark, ignored the Complainant's cease and desist letter received two years ago and uses the site as a marketing tool to attract customers. 

The Panel found that the Registrant failed to submit evidence of use of MYPILLOW as a trademark prior the registration of the Domain Name.

The Panel further held that the Domain Name was not registered in bad faith because the mark is descriptive and the Registrant swore an affidavit confirming that she was unaware of the Domain Name at the time it was registered.

You can read the decision here.

#360 - meetic.ca - TRANSFER GRANTED.

The Complainant is a leading online dating service in Europe, and owner of the MEETIC trademark registered in Canada since March 2007. The Domain name was registered in May, 2007. The Panel found that the Domain Name was registered in bad faith because it is points to a pay-per-click website and that the Registrant has a pattern of registering domain names using trademarks belonging to third parties (reference made to the twittr.com UDRP WIPO Case Number D2011-1992).

You can read the decision here.

#359 - desigual.com - TRANSFER GRANTED

The Complainant is the owner of the DESIGUAL design trademark registered in Canada in association with clothing since 1999. The Domain Name was registered in January, 2010 and the Registrant argues that DESIGUAL is generic and is Spanish for “uneven, unequal and one-sided”.  The Domain Name was hyperlinked to giftagreen.com, a business that appeared on Dragon’s Den and its tea products are sold in 500+ stores across Canada. Additionally, an offer to sell the Domain Name for $40,000.00 and on another occasion for $50,000.00 was not unsolicited.

The Panel found that the backwards ‘S’ in the Complainant’s design trademark does not alter the finding of confusion.  The Panel further held that the legitimacy of the giftagreen.com business is not in issue in the Complaint.  Additionally, the Panel found that the Domain Name was registered in bad faith because the Registrant used the DESIGUAL mark to hyperlink its site to giftagreen.com.

You can read the decision here.

kohlercanada.ca and kohlergeneratorscanada.ca - TRANSFER GRANTED

The Complainant, Kohler Co. has used the KOHLER trademark in Canada since 1873 in association with various household and commercial products including bathtubs.  The Registrant's website forwards users to firstpowergenerators.com, which offers generator products from the Complainant's competitor(s).  The Domain Names were not registered until June, 2016, long after the Complainant established trademarks registrations and in Canada.  The Panel found that the Domain Names were registered in bad faith because the Registrant's mark, FIRST POWER GENERATORS and the products on its site belong to competitors of the Complainant. 

You can read the decision here.

#357 - gthl.ca - TRANSFER GRANTED

The Greater Toronto Hockey League was founded in 1911 and the Complainant owns the family of GTHL trademarks registered for use in association with youth ice hockey goods and services. The Registrant registered the Domain Name in 2004, operates a pay-per-click website, and did not respond to the Complaint.  The Complainant was able to establish common law trademark rights in GTHL prior to the 2004 registration of the Domain Name.  Additionally, the Panel found that the Domain Name was registered in bad faith because the Registrant registered sixty other Domain Names including trademarks belonging to other rights holders.

You can read the decision here.

#356 - chick-fil-a.ca - TRANSFER GRANTED

The Complainant is a quick-selling service restaurant in the chicken segment, and owner of the family of registered Canadian trademarks, CHICK-FIL-A.  The majority of the Complainant’s restaurants are in the United States however it does operate in Calgary, Alberta. The Registrant failed to submit a substantive response, but did offer to transfer the Domain Name to the Complainant.

The Panel found that the Domain Name was registered in bad faith because the passive holding of a Domain Name prevents the rights holder from registering its trademark as a Domain Name, and ignoring cease and desist letters strongly supports a finding of bad faith.

You can read the decision here. 

#355 - reginalutheranhome.ca and theedengroupofcompanies.ca - TRANSFER GRANTED

The Complainant, owner of the REGINA LUTHERAN HOME and EDEN CARE COMMUNITIES, used in Canada as early as 1963 and 2011, respectively. The Registrant registered the Domain Names in October, 2017.  The Complainant alleges that the Domain Name was set up to disrupt the business of the Complainant and extort money from the Complainant.  The two parties are entrenched in a vicious dispute that has made its way to the local media and Police.  The Registrant is a council member of the Complainant’s business, and his wife its former chair person.  He alleges that the Domain Name was registered in good faith to criticize the business (including its mismanagement and finances) of the Complainant.  The web site directs visitors looking for the Complainant to its actual web site (by hyperlink).

The Panel found that the Domain Name was registered in bad faith.  The Panel analyzed whether the web site was registered for the purpose of valid criticism, and held that although some of the material on the web site is criticism, the material as a whole is not.  The Registrant appears to be fixated on a vendetta against the Complainant’s former CEO, and the material on the site lacks objectivity, and is therefore not within the meaning of criticism.  Additionally, in communication between the parties prior to the registration of the Domain Names, the Registrant did seek compensation (and an apology) from the Complainant and would have abandoned his “project”.

Interestingly, the Registrant sought its costs associated with responding to the Complaint, which was rejected because the Complaint was not brought in bad faith.

You can read the decision here.