Wednesday, January 31, 2018

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.

Monday, January 29, 2018

#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.

Monday, January 22, 2018

#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

Monday, January 15, 2018

#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