Tuesday, October 27, 2020

#445 - pharmanovartis.ca - TRANSFER GRANTED

 The Complainant owns the NOVARTIS trademarks, registered in Canada since 2000.  The Domain Name was registered on November 12, 2019.  

The Panel found that the Domain Name was registered in bad faith in part because there was no actual or contemplated good-faith use of the website - it initially resolved to an inactive Word Press page, but following delivery of a cease and desist letters and attempts to settle the matter, the website later resolved to an error page.  

You can read the decision here.

Wednesday, October 14, 2020

#443 - brooks-canada.ca - TRANSFER GRANTED

 The Complainant owns the BROOKS trademark registered in Canada for use in association with footwear and apparel.  The Domain Name resolves to a website that includes offers for sale products similar to those products offered in Canada by the Complainant.  A quick visit to the website as of today's date (October 14, 2020) appears to show a typical website offering suspected counterfeit merchandise. 

The Panel found the Domain Name was registered in bad faith because consumers are under the mistaken impression that they are purchasing footwear and apparel goods from the Complainant.

You can read the decision here.  

#442 - brooksshoescanada.ca - TRANSFER GRANTED

The Complainant owns the BROOKS trademark registered in Canada for use in association with footwear and apparel.  The Domain Name resolves to a website that includes offers for sale products similar to those products offered in Canada by the Complainant.  A quick visit to the website as of today's date (October 14, 2020) appears to show a typical website offering suspected counterfeit merchandise. 

The Panel found the Domain Name was registered in bad faith because consumers are under the mistaken impression that they are purchasing footwear and apparel goods from the Complainant.

You can  read the decision here

Monday, August 31, 2020

#441 - skecherscanadashoes.ca - TRANSFER GRANTED

 The Complainant owns the  SKECHERS family of marks, registered for use in association with footwear, among other goods. The website is being used to offer goods bearing the SKECHERS trademarks. 

The Panel found that the Domain Name was registered in bad faith, in part because the Registrant has no relationship with the Complainant. 

You can read the decision here

Friday, August 21, 2020

#440 - trucksuite.ca - COMPLAINT DISMISSED

 The Complainant Trucksuite LLC, began providing truck warranty services in Canada in the spring of 2019 (common law trademark rights).  It uses the domain name trucksuite.com.  The Registrant carries on busienss as Donofrio Auto Group, and refers to its truck warranty business as "My Trucks Advisor".  The Domain Name was registered in April 2019.  The Registrant also registered the Trucksuite Canada business name, and the parties entered into discussions regarding expanding the Complainant's Trucksuite business into Canada. Talks broke down between the parties in February 2020.  Interestingly, the Panel notes that Trucksuite Canada Ltd. is a federal corporation, and both the Complainant's representative and the Registrant are listed as directors. 

The Panel found that the Complainant did not have rights in the common law trademark/trade name rights prior to April 2019.  Although the Panel did not provide a decision based on bad faith, the Panel notes that the merits of the business dispute between the parties is beyond the scope of the Complaint. 

You can read the decision here.


Thursday, August 20, 2020

#439a (440) - davidyurman.ca - TRANSFER GRANTED

The Complainant owns the DAVID YURMAN trademark, registered for use in association with jewelry and watches, amongst other goods.  The Registrant did  not respond, and the Domain Name links to a pay-per-click website.

The Panel found that the Domain Name was registered in bad faith, because the Registrant offered to sell the Domain Name in exchange for $5500 USD, and the Registrant currently holds numerous domain names corresponding directly to third-party trademarks. 

You can read the decision here

Wednesday, August 19, 2020

#439 - dyedurham.ca - TRANSFER GRANTED

The Complainant has been using the DYE & DURHAM trademark in Canada since 1911. Its software is used by many top law firms in Canada. The Registrant did not respond. 

The Domain Name is linking you a website containing products and services including legal software.  The ‘contact us’ portion of the website went unanswered. The Panel found the Domain Name was registered in bad faith because of the Registrant’s misappropriation of the long-standing trademark, meant to intentionally disrupt the Complainant’s business. 

You can read the decision here.

Tuesday, August 18, 2020

#438 - purellhandsanitizer.ca - TRANSFER GRANTED

The Complainant owns the PURELL trademarks in Canada, the long-recognized manufacturer or hand-hygiene and skin care products. The Complainant alleges the Registrant is a direct competitor. 

The Panel found that the Domain Name was registered in bad faith, because the Domain Name was redirecting to zapagem.shop, which sells competing hand sanitizer products. 

You can read the decision here

#437 - birkenstock.ca - TRANSFER GRANTED

The Complainant owns the highly popular BIRKENSTOCK trademark registered for use in association with footwear.  The Registrant did not file a formal response.  

The Panel found that the Domain Name was registered in bad faith because the products sold on the website clearly show Birkenstock branded products sold for commercial gain through Amazon by a competitor of the Complainant. 

You can read the decision here

Friday, August 14, 2020

#436 - brooksshoes.ca - TRANSFER GRANTED

The Complainant owns the BROOKS family of trademarks, registered for use in association with footwear amongst other goods. The Registrant did not respond. The Registrant’s website links to a website selling goods bearing the BROOKS trademarks, without the Complainant’s permission. 

The Panel found that the Domain Name was registered in bad faith because the website was clearly set up to divert payments away from the Complainant and using the Complainant’s marks without permission.  

You can read the decision here. 

Thursday, August 13, 2020

#435 - jellybellys.ca - TRANSFER GRANTED

The Complainant manufactures and distributes jelly beans using the highly popular JELLY BELLY trademark.  The Registrant's email address ends in suckerscandyco.com, and the Domain is forwarding to the suckerscandyco.com website (which offers for sale candy, including the Complainant's JELLY BELLY candy).  The Registrant wrote an email advising that he has been offered as much as "$30,000.00 - $50,000.00 for .com and .ca Domain Names, but ignored a cease and desist letter later delivered to him by the Complainant. 

The Panel found that the Domain Name was registered in bad faith due to the addition of the 's' to the Complainant's trademark, which could not have been a coincidence. Further, the Panel found this was a deliberate attempt to trade off the Complainant's notoriety for commercial gain. 

You can read the decision here

#434 - facebookshop.ca - TRANSFER GRANTED

Facebook Inc. is a little-known social network with over 2.4 billion monthly active users worldwide.  It is the 3rd most viewed website in Canada.  The website previously pointed to an undeveloped page with a picture of a baby and eyes of a woman, and very bizarre text about love and death. 

The Panel found that the Domain Name was registered in bad faith because the added element of "shop" suggests a commercial purpose at the time of the registration, and clearly used FACEBOOK to generate clicks.

You can read the decision here

#433 - iceriversprings.ca - TRANSFER GRNTED

The Complainant owns the ICE RIVER SPRINGS trademark, and former owner of the .ca domain name when it inadvertently allowed the Domain Name to expire. The Domain Name is being used as a website to include information about the Complainant, and information about unrelated cannabis companies and casinos in Canada.  The Registrant did not respond.  

The Panel found that the Domain Name was registered in bad faith because it is attempting to impersonate the Complainant, for a commercial benefit. 

You can read the decision here

Wednesday, August 5, 2020

#432 - katespadeoutlet.ca - TRANSFER GRANTED

The Complainant is the owner of the highly popular KATE SPADE trademarks registered for use in association with a variety of luxury fashion goods. 

The Panel found that the Domain Name was registered in bad faith in part because the Registrant's website was commercial in nature (evidence included in the Complaint indicated the goods offered for sale were counterfeit). 

You can read the decision here

Tuesday, August 4, 2020

#431 - dressbarn.ca - TRANSFER GRANTED

The Complainant is the owner of the DRESS BARN trademark, registered in Canada in March, 2008.  The Registrant registered the Domain Name in 2013, sometime after the Domain lapsed in August of that year.

The Panel found that the Domain Name was registered in bad faith, because the Registrant registered the Domain Name after the Complainant failed to renew it (and even though the Domain Name does not resolve to an active website).

You can read the decision here

Monday, July 13, 2020

#430 - katespade.ca - TRANSFER GRANTED

The Complainant is the owner of the highly popular KATE SPADE trademarks registered for use in association with a variety of luxury fashion goods.  The Respondent's representative is Daniel Mullen, often referred to as a notorious cyber squatter, in Canada.

Despite obtaining additional time to file a response, the  Respondent failed to do so.  The Panel found that the Domain Name was registered in bad faith because he has been in numerous proceedings brought by third party trademark owners in CDRP and UDRP cases.  Additionally, the Domain Name was being used as a pay-per-click site.

You can read the decision here.

Monday, June 15, 2020

#429 - facebookstore.ca facebook-deals.ca

The Complainant is the owner of the highly-popular social media conglomerate, using the trademark FACEBOOK. The Registrant responded to the Complaint, and agreed to transfer the Domain Name to the Complainant (it was never received because an incorrect email for Complainant's counsel was used).

Even if the Registrant had not agreed to willingly transfer the Domain Name, the Panel would have held it was registered in bad faith.  Although no reasons for bad faith were provided by the Panel, the evidence included information that the Registrant also owned Domain Names containing third-party trademarks, such as google-bids.com and google-offers.com.

You can read the decision here.

Wednesday, May 6, 2020

#427 - interview-sysco.ca/hire-sysco.ca - TRANSFER GRANTED

The Complainant owns the SYSCO mark, registered and used in Canada for over 20 years.  The Registrant did not file a response.  The Panel found that the Registrant registered the Domain Name in bad faith because the evidence included a screenshot of an email and the website clearly related to a job phishing scam using the Complainant's marks to unsuspecting potential victims, without permission. Further, the Registrant registered similar Domain Names including other third party marks such as SEARS, SAFEWAY, HOME DEPOT and LOBLAWS.

You can read the decision here.

Wednesday, April 8, 2020

#426 - therafirm.ca - TRANSFER GRANTED

The Complainant manufactures textiles for medical and consumer markets, using the THERAFIRM trademark, in Canada since as early as 1998.  The Complainant alleges that the Registrant is offering imitation/counterfeit products, without the Complainant's authorization.

The Panel found that the Domain Name was registered in bad faith, because the Registrant registered five other Domain Names which it was not entitled to, and the Domain Name was offering third party products, competing with the Complainant.  The Panel further found that the use of the Complainant's trademark on the Domain Name's site further adds to customer confusion. 

You can read the decision here.

#425 - kpmg-lawyers.ca - TRANSFER GRANTED

The Complainant is one of the world's leading providers of tax, audit and advisory services, using the KPMG trademark.  The Domain Name was registered in September, 2019, long after the Complainant established its billion dollar business.

The Registrant attempted to defraud one of KPMG's customers in a spear phishing scam in an attempt to obtain $500,000.00 USD to "complete the transaction for legal fees on a deal". 

Although the Domain Name did not link to an active website, the Panel found that the Domain Name was registered in bad faith pursuant to 3.5 of the Policy because the bad faith is linked to the perpetrator’s awareness at the time of the registration that a third party’s rights would be damaged (in this case - the spear phishing campaign).

You can read the decision here.

#424 - snapchatprints.ca; snapchatprmtca; snapcatprints.ca - TRANSFER GRANTED

Snap Inc. is the owner of the highly popular SNAPCHAT smartphone application, launched in 2011. The Registrant has been involved in two previous domain name disputes with the Complainant.  Previous panelists found the Registrant was offering counterfeit goods bearing the SNAPCHAT IP, and that the domain names were registered in bad faith.

The Panelist found that the Domain Names were registered in bad faith because the sites were redirecting to other sites competing with the Complainant's business, which creates a clear impression of causing confusion, disruption and hijacking of the Complainant's business.

You can read the decision here.

Thursday, March 12, 2020

#423 - wwwskyscanner.ca et al - TRANSFER GRANTED

The Complainant is a leading online global travel search site specializing in offering comparisons for consumers of inexpensive flight prices, and owns the registered trademark SKYSCANNER in Canada since 2011.

The Registrant registered numerous 'typo-squatting' Domain Names infringing on the Complainant's trademark rights, and containing links to "Skyscanner Flights" which directs users to sites associated with Complainant's competitors.

The Panel relied on the recent Skyscanner case (DCA-2180-CIRA (2020) with very similar typo-squatting facts.

You can read the decision here.

$422 - bridor.ca - TRANSFER GRANTED

The Complainant owns the BRIDOR trademark which has been used in Canada since 1985, long before the Domain Name was registered. The Domain Name was redirecting to a "survey website", likely to obtain credit card details under false pretenses.

The Panel found that the Domain Name was registered in bad faith because the Registrant was the owner of approximately 65 Domain Names that were confusing with third party trademarks.

You can read the decision here.

#421 - galanz.ca - TRANSFER GRANTED

The Complainant owns the GALANZ trademark, registered for use in association with a range of home appliances. The Complainant alleges that the Registrant is a competitor, and is knowledgeable of home appliances and electronics, because it operates several businesses in this field.

The Panel found that the Domain Name was registered in bad faith because Domain Name does not appear to have been used for any purpose other than to link to websites selling microwave ovens and other products and services which compete with those of the Complainant.

You can read the decision here.

Thursday, March 5, 2020

#420 - bedbathbeyond.ca - TRANSFER GRANTED

The Complainant owns the highly popular BED BATH & BEYOND trademarks, registered in Canada since 1995. The Registrant registered the Domain Name in January, 2007. 

The Panel held that the Domain Name was registered in bad faith since the evidence in the Complaint included screenshots of the website, which contained links to other businesses selling competing products.

You can read the decision here.

Thursday, February 20, 2020

#419 - skyscannner.ca et. al - TRANSFER GRANTED

The Complainant is a leading online global travel search site specializing in offering comparisons for consumers of inexpensive flight prices, and owns the registered trademark SKYSCANNER in Canada since 2011.

The Registrant registered numerous 'typo-squatting' Domain Names infringing on the Complainant's trademark rights, and some of the sites direct users to links associated with the Complainant's competitors, while others were inactive.

The Panel found that the Domain Name was registered in bad faith, and agreed with the Complainant's submission that it would be a significant burden to have to continuously review the Registrants Domain Names and intervene when they *started* linking to third party competitors. This is another CDRP decision confirming that the passive use of a Domain Name satisfies paragraph 3.4(c) of the CDRP Policy. 

You can read the decision here.

#418 - sapenergy.ca - TRANSFER GRANTED

The Complainant owns the SAP trademark, registered for use in association with data media and materials for computer software, among other goods, registered in Canada nearly 20 years prior to the Domain Name registration in October, 2019.  The Complainant provided evidence relating to the use of the Domain Name in an attempt to defraud Shell Canada Limited by impersonating an employee of the Complainant, without permission.

The Panel found that the Domain Name was registered in bad faith, and noted that the forwarding of the Domain Name to the Complainant's legitimate website creates the false impression that an email originating from the Registrant's Domain is in some way associated with the Complainant, which may confuse vendors (despite not misleading Shell Canada, a sophisticated entity).

You can read the decision here.

Tuesday, February 11, 2020

#417 - vivendi.ca - TRANSFER GRANTED

The Complainant is a French mass media conglomerate headquartered in Paris, using the vivendi.com domain name since 1997, and the VIVENDI trademark was registered in Canada in 2000.  The Disputed Domain Name was registered in 2005, by Daniel Mullen, a known Registrant to numerous rights owners that were the subject matter of CDRP complaints.

The Registrant responded that the Complainant has no business in Canada, waited too long to bring the Complaint following registration of the Domain Name, and that the page was parked because Mr. Mullen's "business" was not immediately put to use, amongst other things. The Registrant also called into question the validity of the Complainant's mark, which is outside the scope of a CDRP dispute.

The Panel found that the Domain Name was registered in bad faith because of the Registrant's pattern of registering third party trademarks.

You can read the decision here.

Friday, February 7, 2020

#416 - propanedusuroit.ca - TRANSFER GRANTED

This summary is based on a Google Translation of the decision to English.  The Complainant uses the business name, Propane Du Suroit.  The Registrant did not respond.  The Domain Name is forwarding to a separate business, boutiquedufoyer.com.  The Panel found that the Domain Name was registered in bad faith because the website is taking away internet traffic from the Complainant's business.

You can read the decision here.

Thursday, February 6, 2020

#415 - cannador.ca - REFUSED

The Complainant is the owner of the CANNADOR trademark, registered *after* the Domain Name was registered.  The Complainant relied on common law use of its trademark, and submitted website printouts and details concerning its sale of goods on mycannador.ca.  However, the website was registered after the Disputed Domain Name, and the Panel held that it was not clear whether goods were sold by the Complainant in Canada prior to registration of the Domain Name. 

You can read the decision here.

#414- exxon.ca - TRANSFER GRANTED

The Complainant is the owner of the EXXON trademark, registered for use in Canada since 1976.  The Respondent is using the website as a pay-per-click site.

The Panel found that the Domain Name was registered in bad faith, because the Registrant had registered 60+ domain names using popular third-party trademarks.

You can read the decision here.

Wednesday, February 5, 2020

#413 - gmcdealer.ca - TRANSFER GRANTED

The Complainant owns the GMC trademark, used in Canada since 1912, and registered in November, 1957. The Domain Name was registered in March, 2019, and is used as a "survey website" requesting credit card information, and later as a pay-per-click website. The Registrant ignored the Complainant's cease and desist letter delivered through CIRA message delivery form.

The Panel found that the Domain Name was registered in bad faith, in part by registering at least 65 domain names corresponding to third party trademarks, and because the Registrant failed to respond to the cease and desist letter.

You can read the decision here.

Thursday, January 23, 2020

#412 - thekoodoguys.ca

The Complainant owns the KOODO trademark, registered for use in association with wireless telecommunication services. The Registrant operates a website that offers to help save money on cellphone bills, and displays the Complainant's trademarks.  The Registrant allegedly offers "black market" cell phone plans where third parties switch users' cell phone plans to Canadian provinces with less expensive rates.  

The Panel found that the Domain Name was registered in bad faith because it was a deliberate attempt by the Registrant to create a first impression for visitors to the site that the Complainant authorized the use of its trademark. 

You can read the decision here

Tuesday, January 21, 2020

#411 - Job-Newegg.ca - TRANSFER GRANTED

The Complainant owns the NEWEGG trademark registered for use in association with online retail store services relating to computer and computer-related equipment. The Complainant alleges that the Registrant registered the Domain Name for use as part of a "job phishing scam".

The Panel found that the Domain Name was clearly registered in bad faith based on 1) the web site featured the Complainant's logo, a Career Opportunities section and provided the ability to draft an application, and 2) the additional evidence provided by the Complainant including LinkedIN advertisements, fraudulent contracts and emails requesting sensitive personal financial information from applicants/victims.

You can read the decision here.

Friday, January 10, 2020

#410 - disneystore.ca, disneycruises.ca, disneytravelagent.ca - TRANSFER GRANTED

The Complainant is the worldwide leader of children's entertainment goods and services, and owner of the DISNEY family of trademarks, registered in Canada as early as 1987. The Respondent's Domain Names forward to a variety of random websites other than disneystore.ca, which redirects to the Complainant's site.  The Respondent did not respond to the Complaint.

The Panel found that the Domain Names were registered in bad faith since the Complainant's activities are well known, and this provides a suggestion of an improper motive in obtaining the registrations - including producing revenue through advertising and kickbacks from sites to which traffic is forwarded.   

You can read the decision here.

Tuesday, January 7, 2020

#409 - sunrisehatchery.ca - COMPLAINT DISMISSED

The Complainant and the Registrant are competitors in the chicken/poultry industry. There are several factual disputes in evidence, including whether there was an agreement concerning the Registrant’s use of the Sunrise Hatchery name/mark in Alberta. Additionally, the Registrant argued that it was previously represented by Complainant’s counsel, and received invoices in the Sunrise Hatchery business name.

The Panel refused to find that the Domain Name was registered in bad faith, or that the Registrant had no legitimate interest in the Domain Name. The evidence in the record established that the Registrant had used the Domain Name and the business name Sunrise Hatcheries Inc. before the Complainant registered its trademark in Canada.  Additionally, the Panel rejected the Complainant’s argument that there could be confusion in the marketplace through use of the Domain Name.

The Panel refused to award costs to the Registrant based on the non-disclosure of certain information relating to the dispute between the parties in the initial Complaint.

You can read the decision here.

Thursday, January 2, 2020

#408 - tivo.ca - TRANSFER GRANTED

The Complainant owns the TIVO mark (registered in association with streaming services), which matured to registration after the registration of the Domain Name.  The Complainant argued it has common law rights in and to the Mark, and the delay as it relates an unrelated Opposition proceeding (after the mark was approved by CIPO) should not preclude it from arguing it has rights in the Mark.

The Registrant forwarded the Domain Name to a pay-per-click site.  The Panel found that the Registrant (a well-known "serial cyber squatter") was using the Domain Name to forward to unrelated links, which still competes for internet traffic.

You can read the decision here.